Roxane Laboratories, Inc. v. Abbott Laboratories
Filing
91
MEMORANDUM AND OPINION granting 77 motion to modify the joint claim constructionstatement. Plaintiff is ORDERED to file an amended joint claim construction statement no later than March 25, 2013. Signed by Magistrate Judge Norah McCann King on 3/28/13. (rew)
IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF OHIO
EASTERN DIVISION
ROXANE LABORATORIES, INC.,
Plaintiff,
vs.
Civil Action 2:12-cv-312
Judge Watson
Magistrate Judge King
ABBOTT LABORATORIES,
Defendant.
OPINION AND ORDER
This matter is before the Court on Plaintiff’s Motion to Modify
the Joint Claim Construction Statement (“Plaintiff’s Motion”), Doc.
No. 77, on defendants’ response, Defendants’ Opposition to Plaintiff’s
Motion to Modify the Joint Claim Construction Statement (“Defendants’
Response”), Doc. No. 85, and on plaintiff’s reply, Roxane’s Reply in
Support of its Motion to Modify the Joint Claim Construction Statement
(“Plaintiff’s Reply”), Doc. No. 86.
For the reasons that follow,
Plaintiff’s Motion is GRANTED.
I.
Background
This is a patent infringement action in which plaintiff Roxane
Laboratories, Inc., seeks a declaration of noninfringement of patents
currently held by defendant AbbVie Inc., relating to the drug Norvir®.
Amended Complaint, Doc. No. 56, ¶¶ 1, 11-15.
The Court set December
19, 2012 as the date by which the parties were to file a joint claim
construction statement.
3.
Preliminary Pretrial Order, Doc. No. 29, p.
The parties met that deadline. Joint Claim Construction and
Prehearing Statement, Doc. No. 65.
The parties were to have completed
claim construction discovery by February 4, 2013; opening claim
construction briefs were due by February 19, 2013 and responsive claim
construction briefs were due by March 21, 2013.
Preliminary Pretrial
Order, p. 3.
The Joint Claim Construction Statement identifies two disputed
claim terms: “substantially pure” and “amorphous ritonavir.”
B to Joint Claim Construction Statement, Doc. No. 66.
Appendix
Plaintiff
proposes that “amorphous ritonavir” be construed as “the physical form
of ritonavir characterized by lack of defined crystal structure and
three-dimensional long-range structure.”
Id. at p. 14.
Defendants
propose that the term be construed as “the solid physical form of
ritonavir characterized by lack of crystal structure.”
Id.
After the Joint Claim Construction Statement was filed, the
parties attempted, through a series of letters, to further narrow the
claim construction disputes.
On January 3, 2013, defendants suggested
that the phrases lack of “defined crystal structure” and “threedimensional long-range structure” were synonymous.
Motion, Exhibit A.
Plaintiff’s
Plaintiff rejected that suggestion on January 9,
2013, Plaintiff’s Motion, Exhibit B, and, on February 13, 2013,
proposed the following alternative construction: “the solid physical
form of ritonavir (i.e., the form of ritonavir having a glass
transition as shown in Figure 10 of the ‘359 patent) that is also
characterized by the lack of crystal structure (i.e., as shown in
Figure 3 of the ‘359 patent).”
Plaintiff’s Motion, Exhibit C.
Defendants rejected that proposal on February 15, 2013, and suggested
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that the parties proceed with claim construction briefing using the
definitions provided in the Joint Claim Construction Statement.
Plaintiff’s Motion, Exhibit D.
Plaintiff declined that suggestion and
informed defendants that it intended “to present its compromise
construction of ‘amorphous ritonavir’ to the Court in its claim
construction briefing so as to narrow the remaining issues in
dispute.”
Plaintiff’s Motion, Exhibit E.
Defendants again requested
that plaintiff abide by the definitions provided in the Joint Claim
Construction Statement.
Plaintiff’s Motion, Exhibit F.
plaintiff
refused. Plaintiff’s Motion, Exhibit G. After the Court conferred with
counsel for all parties on February 19, 2013, the Court directed
plaintiff to file a motion to modify the joint claim construction
statement.
Amended Order, Doc. No. 74.
The Court also suspended the
dates for filing opening claim construction briefs and responsive
claim construction briefs pending resolution of that issue.
Id.
Plaintiff’s motion to amend the Joint Claim Construction
Statement is intended “to clarify its original construction.”
Plaintiff’s Motion, pp. 5-6.
Specifically, plaintiff seeks to amend
its construction of “amorphous ritonavir” to be “the solid physical
form of ritonavir (i.e., the form of ritonavir having a glass
transition as shown in Figure 10 of the ‘359 patent) that is also
characterized by the lack of crystal structure (i.e., as shown in
Figure 3 of the ‘359 patent)”.
See id. at pp. 5-6, Exhibit C.
Defendants oppose any such modification, arguing that plaintiff
has failed to show good cause to modify the scheduling order and that
defendants would be prejudiced by the proposed amendment.
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Specifically, defendants argue that the proposed amendment “add[s]
new, unwarranted claim limitations” based on evidence that “has been
available through the public record,” and it deprives defendants of
the opportunity to “develop the evidence and arguments necessary for
the claim construction briefing.”
Defendants’ Response, pp. 2-3, 6-7.
Defendants also argue that the grant of the requested modification
would deprive them “of the opportunity to consider and present expert
testimony on the new construction.”
Id. at p. 6.
Alternatively,
defendants ask, should the modification be permitted, that they be
granted at least sixty (60) days to conduct additional discovery,
including expert discovery, prior to the filing of opening claim
construction briefs.
II.
Id. at pp. 6-7.
Discussion
Plaintiff first argues that it has the unqualified right to amend
the Joint Claim Construction Statement. Plaintiff’s Motion, p. 3
(“[Plaintiff] is not aware of any requirement that a party seek leave
of the Court to amend its proposed constructions. . . .
The absence
of a provision requiring [] leave to propose a modified construction
for purposes of compromise creates a presumption that there is no such
requirement.”).
Alternatively, plaintiff cites to Pat.L.R. 103.7,
“Amendment to Contentions,” for the proposition that amendment is
permissible if there is “no undue prejudice to the parties and the
party seeking amendment acts in good faith.”
Id. at p. 4.
In the case presently before the Court, the parties filed a Rule
26(f) report, Doc. No. 25, the Court held a preliminary pretrial
conference at which all parties were represented, and the Court issued
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a Rule 16 scheduling order that, inter alia, set a date for the filing
of a joint claim construction statement.
Doc. No. 29, p. 3.
Preliminary Pretrial Order,
The Local Patent Rules do not usurp either the
Federal Rules of Civil Procedure or the local rules of this Court that
are not inconsistent with the Local Patent Rules.
See Pat.L.R. 101.2
(“The Local Civil Rules of this Court shall also apply to these
actions, except to the extent that they are inconsistent with these
Local Patent Rules.”); RFR Indus., Inc. v. Century Steps, Inc., 477
F.3d 1348, 1351 (Fed. Cir. 2007) (citing Biodex Corp. v. Loredan
Biomedical, Inc., 946 F.2d 850, 857-58 (Fed. Cir. 1991) (“[O]ur
practice has been to defer to regional circuit law when the precise
issue involves an interpretation of the Federal Rules of Civil
Procedure or the local rules of the district court.”); Connective
Tissue Imagineering, LLC v. Mitts, C 07-00058 WHA, 2007 WL 2348741
(N.D. Cal. Aug. 14, 2007) (applying Rule 16(b) to a motion for leave
to amend the joint claim construction statement).
The date for filing
a joint claim construction statement was established in a Rule 16
scheduling order; a motion for leave to amend a joint claim
construction statement must therefore comply with Fed. R. Civ. P. 16.
Rule 16(b) of the Federal Rules of Civil Procedure requires the
Court, in each civil action not exempt from that rule, to issue a
scheduling order.
Fed. R. Civ. P. 16(b).
“A schedule may be modified
only for good cause and with the judge’s consent.”
16(b)(4).
Fed. R. Civ. P.
“‘The primary measure of Rule 16’s ‘good cause’ standard is
the moving party's diligence in attempting to meet the case management
order’s requirements.’”
Inge v. Rock Fin. Corp., 281 F.3d 613, 625
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(6th Cir. 2002) (quoting Bradford v. DANA Corp., 249 F.3d 807, 809
(8th Cir. 2001)).
“A district court should also consider possible
prejudice to the party opposing the modification.”
Andretti v. Borla
Performance Indus., Inc., 426 F.3d 824, 830 (6th Cir. 2005) (citing
Inge, 281 F.3d at 625).
The focus is, however, “primarily upon the
diligence of the movant; the absence of prejudice to the opposing
party is not equivalent to a showing of good cause.”
Ortiz v. Karnes,
2:06-cv-562, 2010 WL 2991501, at *1 (S.D. Ohio July 26, 2010) (citing
Tschantz v. McCann, 160 F.R.D. 568, 571 (N.D. Ind. 1995)).
Whether to
modify a pretrial schedule pursuant to Rule 16(b) falls within the
district court’s discretion.
Leary v. Daeschner, 349 F.3d 888, 909
(6th Cir. 2003).
Plaintiff argues, for the first time in its reply brief, that it
established good cause to modify the scheduling order because “it
immediately sought to amend its construction of ‘amorphous ritonavir’
as soon as the dispute between the parties crystallized.”
Reply, p. 1.
Plaintiff’s
See also id. at p. 2 (“[Plaintiff notified defendants]
of its intention to pursue its compromise construction on the same day
that it became aware of the dispute.”).
Plaintiff also argues that it
“could not have brought up this dispute any earlier” because the
parties were not aware “that the dispute existed” or that “further
construction” was necessary until the parties met and conferred after
the Joint Claim Construction Statement had been filed.
Id. at p. 2.
The issue presently before the Court is not whether the parties
disputed plaintiff’s current proposed construction prior to the
deadline for filing a joint claim construction statement; had there
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been no dispute, the term would certainly have been included in the
appendix of ”Agreed Terms” attached to the Joint Claim Construction
Statement.
See Joint Claim Construction Statement, p. 6.
Yet,
plaintiff has provided no explanation whatsoever why it did not
present its new construction earlier.
Plaintiff argues that “the very need for [] further construction
was not evident until after the parties engaged in their meet and
confer in January and February 2013.”
Plaintiff’s Reply, p. 2 n.2.
Plaintiff does not, however, explain why “further construction” was
necessary and why it was not evident that further construction was
necessary until one day prior to the deadline for filing opening claim
construction briefs.
The Figures in United States Patent No.
7,148,359 referred to in plaintiff’s new construction, see Plaintiff’s
Motion, pp. 5-6, Exhibit C, were available to plaintiff prior to the
filing of the Joint Claim Construction Statement and prior to the
parties’ exchange of proposed claim terms and phrases for
construction.
See Plaintiff’s Reply, p. 6.
In fact, plaintiff cited
to these Figures as intrinsic evidence in support of its construction
in the Joint Claim Construction Statement.
Claim Construction Statement, p. 14.
See Appendix B to Joint
Given plaintiff’s prior
knowledge of the information upon which it now relies, the Court sees
no reason, and plaintiff has provided no explanation, why plaintiff’s
new construction could not have been asserted in the Joint Claim
Construction Statement.
Under the circumstances, plaintiff has failed to show good cause
for modifying the scheduling order to permit an amendment to the Joint
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Claim Construction Statement.
Nevertheless, because claim
construction is a question of law to be determined by the Court, see
Markman v. Westview Instruments, Inc., 517 U.S. 370, 384 (1996), and
because plaintiff’s amended construction might assist the Court in
making that determination, the Court will permit plaintiff to file an
amended Joint Claim Construction Statement to amend its construction
of the term “amorphous ritonavir.”
In so deciding, the Court also
concludes that any prejudice otherwise accruing to defendants can be
ameliorated. The parties have not yet filed opening claim construction
briefs, a claim construction hearing has not yet been scheduled, and
defendants will be permitted to pursue discovery and to prepare expert
testimony on the new construction.
Finally, plaintiff does not object
to the withdrawal by defendants of their original three
interrogatories directed to plaintiff’s original construction of term
“amorphous ritonavir.”
See Plaintiff’s Reply, p. 6 n.4.
Plaintiff’s Motion to Modify the Joint Claim Construction
Statement, Doc. No. 77, is therefore GRANTED.
Plaintiff is ORDERED to
file an amended joint claim construction statement no later than March
25, 2013.
The amended statement may modify only plaintiff’s
construction of the term “amorphous ritonavir.”
The Preliminary Pretrial Order, Doc. No. 29, is amended as
follows:
CLAIM CONSTRUCTION PROCEEDINGS:
All claim construction discovery must be completed no later than
May 31, 2013.
Opening claim construction briefs, see Pat.L.R.
105.4(b), must be filed by June 15, 2013; responsive claim
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construction briefs, see id., must be filed no later than July 15,
2013.
The matter will be available for a claim construction hearing,
to be held by Judge Watson, in July or August 2013.
DISCOVERY AND EXPERTS:
All fact discovery must be completed within 45 days after the
Court’s ruling on claim construction, but in no event later than
August 30, 2013.
The reports of primary experts on issues on which each party
bears the burden of proof must be produced within 45 days after the
Court’s ruling on claim construction, but in no event later than
August 30, 2013.
The reports of primary experts on issues on which
the opposing party bears the burden of proof must be produced within
45 days thereafter.
The reports of rebuttal experts must be produced
within 30 days thereafter.
The reports shall conform to the
requirements of Fed. R. Civ. P. 26(a)(2)(B) or (C), as appropriate.
Depositions of experts must commence within 14 days after the
production of rebuttal expert reports and must be completed within 60
days of the commencement of the deposition period.
If any date herein falls on a weekend or holiday, the next
business date will control.
March 28, 2013
s/Norah McCann King_______
Norah McCann King
United States Magistrate Judge
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