GILEAD SCIENCES, INC. et al v. WATSON LABORATORIES, INC.

Filing 79

OPINION. Signed by Judge Renee Marie Bumb on 4/26/2016. (TH, )

NOT FOR PUBLICATION

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW JERSEY
CAMDEN VICINAGE

GILEAD SCIENCES, INC. and
ROYALTY PHARMA COLLECTION
TRUST,
Plaintiffs,

Civil No. 15-2350 (RMB/JS)
(Consolidated)
OPINION

v.
WATSON LABORATORIES, INC. and
SIGMAPHARM LABORATORIES, LLC,
Defendants.

This matter comes before the Court upon the parties’
Markman briefs [Docket Nos. 62, 63, 65, 66] requesting the Court
to construe certain disputed claim terms of United States
Reissue Patent No. RE42,462 (the “’462 Patent”).

The Court has

reviewed the parties’ submissions and conducted a Markman claim
construction hearing on April 21, 2016.
The parties’ claim construction dispute revolves around the
inclusion of the term “hydroxyl” or “-CH2CH2OH,” a chemical
compound denoting hydroxyl, in five dependent claims, claims 15,
16, 18, 21, and 22, of the ’462 Patent (collectively, the
“Disputed Claims”).

The parties agree that the terms “hydroxyl”

and “-CH2CH2OH” do not require construction by the Court.

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Rather, the parties disagree as to whether the terms are
properly included in the Disputed Claims.

Plaintiffs Gilead

Sciences, Inc. and Royalty Pharma Collection Trust (together,
the “Plaintiffs”) contend that the inclusion of “hydroxyl” in
substituent R6 in claims 15, 16, 18, and 21 and the term
“-CH2CH2OH” in substituent R6 in claim 22 were included in error.
Therefore, the Plaintiffs urge, the Court should judicially
correct the claims by deleting the words from the Disputed
Claims.

Defendants Watson Laboratories, Inc. and Sigmapharm

Laboratories, LLC (together, the “Defendants”) argue instead
that judicial correction under Novo Industries, L.P. v. Micro
Molds Corp., 350 F.3d 1348 (Fed. Cir. 2003) and its progeny is
inappropriate.
Claim construction is a question of law.

See Markman v.

Westview Instruments, Inc., 518 U.S. 370, 391 (1996).

The Court

determines the meaning of disputed claim terms as understood by
one of ordinary skill in the art at the time of the invention.
See Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir.
2005) (en banc).

Claim terms generally should be given their

ordinary and customary meaning to a person of skill in the art
at the time of the invention.

See id.

To determine the

ordinary meaning, the Court first looks to the intrinsic
evidence, which includes the claims, the specification, and the
prosecution history.

Id. at 1312-17 (“Like the specification,

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the prosecution history provides evidence of how the PTO and the
inventor understood the patent.”).
The starting point for claim interpretation is the claim
language itself, which can “provide substantial guidance as to
the meaning of particular claim terms.”
language of the claims is paramount.

Id. at 1314.

Thus, the

Pass & Seymour, Inc. v.

Int’l Trade Comm’n, 617 F.3d 1319, 1324 (Fed. Cir. 2010); see
Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed.
Cir. 2004) (“in accord with our settled practice we construe the
claim as written, not as the patentees wish they had written
it.”).

The claims, however, “must be read in view of the

specification, of which they are a part.”

Markman v. Westview

Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995), aff’d, 517
U.S. 370 (1996).

Extrinsic evidence, such as dictionaries, may

be consulted to assist in understanding disputed terms.
Phillips, 415 F.3d at 1318.

Extrinsic evidence, however, must

be “considered in the context of the intrinsic evidence.”

Id.

at 1317-19.
In a patent infringement suit, a court may properly
interpret a patent to correct an obvious error.

I.T.S. Rubber

Co. v. Essex Rubber Co., 272 U.S. 429, 441-42 (1926).

Judicial

correction is not meant to be “in any real sense, a re-making of
the claim; but is merely giving to it the meaning which was

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intended by the applicant and understood by the examiner.”

Id.

at 442.
Judicial correction is proper “only if (1) the correction
is not subject to reasonable debate based on consideration of
the claim language and the specification and (2) the prosecution
history does not suggest a different interpretation of the
claims.”

Novo Industries, 360 F.3d at 1354.

The error to be

corrected “must be evident on the face of the patent.”

Fargo

Elecs. v. Iris, Ltd., 287 F. App’x 96, 102 (Fed Cir. 2008)
(citing Group One, Ltd. v. Hallmark Cards, Inc., 407 F.3d 1297,
1303 (Fed. Cir. 2005)).

The Court should also consult the

prosecution history, however, to determine whether only a single
reasonable correction exists.

Id.

Furthermore, in determining

whether it has authority to correct the Disputed Claims, this
Court “must consider any proposed correction ‘from the point of
view of one skilled in the art.’”

CBT Flint Partners, LLC v.

Return Path, Inc., 654 F.3d 1353, 1358 (Fed. Cir. 2011) (quoting
Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d
1339, 1353 (Fed. Cir. 2009)).
The Plaintiffs contend that the inclusion of hydroxyl in
the Disputed Claims is an error obvious on the face of the
patent, since the Disputed Claims, as written, do not narrow the
independent claim upon which they depend.

Although the

Defendants agree that the Disputed Claims are improperly

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dependent as written, the Defendants urge the Court to enforce
the claims as they are because the error is not obvious on the
face of the patent and there is reasonable debate as to how the
error should be corrected.

The Court agrees with the

Defendants.
Courts may not rewrite claims to correct material or
substantive errors.

See Ultimax, 587 F.3d at 1353; Novo

Industries, 350 F.3d at 1358.

Likewise, “courts may not redraft

claims, whether to make them operable or to sustain their
validity.”

Chef Am., 358 F.3d at 1374.

In sum, Federal Circuit

precedent indicates that judicial correction is a narrow remedy
to be used sparingly.

It is the exception, not the rule, and

should be employed only to correct an error that is so obvious
that there is no question as to the proper correction.

See Novo

Industries, 350 F.3d at 1358.
A review of Novo Industries and its progeny suggests that
the first question this Court must ask in determining whether
judicial correction is appropriate is whether the claim makes
sense as written.

If the answer to that question is “no”, then

the error is obvious on the face of the patent and the inquiry
continues.

See, e.g., CBT Flint, 654 F.3d at 1358 (where

“district court was not required to guess which meaning was
intended in order to make sense of the patent claim,” the
district court should have corrected “detect analyze” to “detect

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and analyze”) (emphasis added); Ultimax, 587 F.3d at 1353
(correcting what the Federal Circuit called “an obvious
typographical error” by inserting comma between “f” and “cl” in
chemical formula where it was undisputed that a person of
ordinary skill in the art knew that “(f cl)” “corresponds to no
known mineral”) (emphasis added); Lemelson v. Gen. Mills, Inc.,
968 F.2d 1202, 1203 (Fed. Cir. 1992) (adding “toy” in claim
where patent was clearly directed a toy trackway, rather than an
actual trackway); ISCO Int’l, Inc. v. Conductus, Inc., 2003 WL
276250, at *4 (D. Del. Feb. 10, 2003) (deleting “planar” from
term “planar amplifiers” where parties agreed that term “planar
amplifiers” is “senseless to any person skilled in the relevant
art”) (emphasis added).

The Court would then assess whether

there is reasonable debate as to the proper correction and
whether the prosecution history suggests a different
interpretation.
If, however, the initial question is answered in the
affirmative, meaning the claim makes sense as written, then the
error is not obvious and judicial correction is inappropriate.
See Grp. One, Ltd. v. Hallmark Cards, Inc., 407 F.3d 1297, 1303
(Fed. Cir. 2005) (“The error here is not evident on the face of
the patent.

The prosecution history discloses that the missing

language was required to be added by the examiner as a condition
for issuance, but one cannot discern what language is missing

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simply by reading the patent.

The district court does not have

authority to correct the patent in such circumstances.”).

While

this may not be the end-all be-all test for judicial correction,
it is an informative framework that guides this Court’s
analysis.
Here, the Disputed Claims make sense as written.
Therefore, the Court finds that, from the perspective of a
person of ordinary skill in art, the inclusion of “hydroxyl” or
“-CH2CH2OH” in the Disputed Claims is not an error obvious on the
face of the ’462 Patent.

“Hydroxyl” and “-CH2CH2OH” are terms

known to those skilled in the art and their inclusion does not
render the claims nonsensical or grammatically incorrect.
The Plaintiffs argue that the inclusion of hydroxyl is an
obvious error because it improperly broadens the scope of the
dependent claims.

Yet, in the Court’s view, this amounts only

to an argument that the Disputed Claims make sense, but are
wrong.

Judicial correction in this case is not appropriate.

While a patent attorney or patent examiner may recognize
that the Disputed Claims, as written, are improperly dependent
upon independent claim 1, it does not follow that a person of
ordinary skill in the art of organic and/or medicinal chemistry
would see the error, let alone the correction, as obvious and
not subject to reasonable debate.

Only when assisted by a

“patent whisperer,” so to speak, would a person of ordinary

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skill in the relevant art view the Disputed Claims as
nonsensical.

Yet a person of ordinary skill in the relevant art

does not have the benefit of such a “patent whisperer” who can
identify words or terms in claims that would render the claims
invalid as a matter of patent law, but that are not blatant
errors as a matter of chemistry or grammar.
Additionally, the ’462 Patent was prosecuted with the
disputed terms in the five dependent Disputed Claims, as well as
in independent claim 24, not at issue in this Order, and the
error was never identified.

Typographical or grammatical errors

may frequently and easily be overlooked, despite being
indisputably obvious errors.

This is especially true during the

hectic process of patent prosecution where the focus is on a
patent’s scope and validity and not its syntax.

The inclusion

of hydroxyl, however, goes precisely to the patent’s scope and
validity.
In this case, the Plaintiffs urge the Court to delete
language that is “not merely cosmetic, but [which has]
substantive significance.”

Novo Industries, 350 F.3d at 1358.

This Court, following Novo Industries and its progeny, finds
that “[t]hat is beyond its authority” and declines to judicially
correct the Disputed Claims.

Id.

As both parties agree that

the terms “hydroxyl” and “-CH2CH2OH” do not need construction,
the Court finds that no construction is necessary and orders

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that the terms shall be given their plain and ordinary meaning.
An accompanying Order shall issue on this date.

s/Renée Marie Bumb
RENÉE MARIE BUMB
UNITED STATES DISTRICT JUDGE
Dated: April 26, 2016

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