AUXILIUM PHARMACEUTICALS, INC. and FCB I, LLC, Plaintiffs,
UPSHER-SMITH LABORATORIES, INC., Defendant.
Steven J. Balick, Esquire, Lauren E. Maguire, Esquire and Andrew C. Mayo, Esquire of Ashby & Geddes, Wilmington, Delaware. Counsel for Plaintiff Auxilium Pharmaceuticals, Inc. Of Counsel: Paul J. Berman, Esquire, Keith A. Teel, Esquire, Tracy O. Ebanks, Esquire, Michael N. Kennedy, Esquire and Erica N. Andersen, Esquire of Covington & Burling LLP.
John M. Seaman, Esquire of Abrams & Bayliss LLP, Wilmington, Delaware. Counsel for Plaintiff FCB I, LLC. Of Counsel: Thomas J. Fleming, Esquire and Howard J. Smith, Esquire of Olshan Frome Wolosky LLP.
Frederick L. Cottrell, III, Esquire and Travis S. Hunter, Esquire of Richards, Layton & Finger, P.A., Wilmington, Delaware. Counsel for Defendant. Of Counsel: Jake M. Holdreith, Esquire, Lars P. Taavola, Esquire and Jaime R. Kurtz, Esquire of Robins, Kaplan, Miller & Ciresi L.L.P.
On January 28, 2013, plaintiffs Auxilium Pharmaceuticals, Inc. ("Auxilium") and FCB I, LLC ("FBI") (collectively, "plaintiffs") filed this infringement action against defendant Upsher-Smith Laboratories, Inc. ("defendant") alleging infringement of U.S. Patent Nos. 7, 320, 968 ("the '968 patent"); 7, 608, 605 ("the '605 patent"); 7, 608, 606 ("the '606 patent"); 7, 608, 607 ("the '607 patent"); 7, 608, 608 ("the '608 patent"); 7, 608, 609 ("the '609 patent"); 7, 608, 610 ("the '610 patent"); 7, 935, 690 ("the '690 patent"); 8, 063, 029 ("the '029 patent"); and 8, 178, 518 ("the '518 patent") (collectively, "the patents-in-suit"). (D.I. 1) Defendant answered the complaint on January 30, 2013 and counterclaimed against plaintiffs for non-infringement of each of the patents-in-suit. (D.I. 7) Plaintiffs answered the counterclaims on February 20, 2013. (D.I. 16)
Auxilium is a Delaware corporation, with its principal place of business in Malvern, Pennsylvania. (D.I. 1 ¶ 1) Auxilium develops and markets pharmaceutical products. (Id.) FCB is a limited liability corporation organized and existing under the laws of the State of Delaware, with its principal place of business in Wilmington, Delaware. (D.I. 1 at ¶ 2) Defendant is a Minnesota corporation, with its principal place of business in Maple Grove, Minnesota. (D.I. 7 at 25 ¶ 1) Defendant is a pharmaceutical company that develops, manufactures and markets a variety of patented and generic pharmaceutical products. (Id.)
Presently before the court is defendant's motion for summary judgment of noninfringement of the patents-in-suit (D.I. 26) and plaintiffs' motion to strike the reply brief (D.I. 67). The court has jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a).
II. STANDARD OF REVIEW
"The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a). The moving party bears the burden of demonstrating the absence of a genuine issue of material fact. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 415 U.S. 574, 586 n.10 (1986). A party asserting that a fact cannot be—or, alternatively, is—genuinely disputed must support the assertion either by citing to "particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations (including those made for the purposes of the motions only), admissions, interrogatory answers, or other materials, " or by "showing that the materials cited do not establish the absence or presence of a genuine dispute, or that an adverse party cannot produce admissible evidence to support the fact." Fed.R.Civ.P. 56(c)(1)(A) & (B). If the moving party has carried its burden, the nonmovant must then "come forward with specific facts showing that there is a genuine issue for trial." Matsushita, 415 U.S. at 587 (internal quotation marks omitted). The court will "draw all reasonable inferences in favor of the nonmoving party, and it may not make credibility determinations or weigh the evidence." Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000).
To defeat a motion for summary judgment, the non-moving party must "do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita, 475 U.S. at 586-87; see also Podohnik v. U.S. Postal Service, 409 F.3d 584, 594 (3d Cir. 2005) (stating party opposing summary judgment "must present more than just bare assertions, conclusory allegations or suspicions to show the existence of a genuine issue") (internal quotation marks omitted). Although the "mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment, " a factual dispute is genuine where "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 411 U.S. 242, 247-48 (1986). "If the evidence is merely colorable, or is not significantly probative, summary judgment may be granted." Id. at 249-50 (internal citations omitted); see also Celotex Corp. v. Catrett, 411 U.S. 317, 322 (1986) (stating entry of summary judgment is mandated "against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial").
A patent is infringed when a person "without authority makes, uses or sells any patented invention, within the United States . . . during the term of the patent." 35 U.S.C. § 271(a). A two-step analysis is employed in making an infringement determination. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995). First, the court must construe the asserted claims to ascertain their meaning and scope. See Id . Construction of the claims is a question of law subject to de novo review. See Cybor Corp. v. FAS Techs., 138 F.3d 1448, 1454 (Fed. Cir. 1998). The trier of fact must then compare the properly construed claims with the accused infringing product. See Markman, 52 F.3d at 976. This second step is a question of fact. See Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998).
"Direct infringement requires a party to perform each and every step or element of a claimed method or product." BMC Res., Inc. v. Paymentech, LP., 498 F.3d 1373, 1378 (Fed. Cir. 2007), overruled on other grounds by 692 F.3d 1301 (Fed. Cir. 2012). "If any claim limitation is absent from the accused device, there is no literal infringement as a matter of law." Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed. Cir. 2000). If an accused product does not infringe an independent claim, it also does not infringe any claim depending thereon. See Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed. Cir. 1989). However, "[o]ne may infringe an independent claim and not infringe a claim dependent on that claim." Monsanto Co. v. Syngenta Seeds, Inc., 503 F.3d 1352, 1359 (Fed. Cir. 2007) (quoting Wahpeton Canvas, 870 F.2d at 1552) (internal quotations omitted). A product that does not literally infringe a patent claim may still infringe under the doctrine of equivalents if the differences between an individual limitation of the claimed invention and an element of the accused product are insubstantial. See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 24 (1997). The patent owner has the burden of proving infringement and must meet its burden by a preponderance of the evidence. See SmithKline Diagnostics, Inc. v. Helena Lab. Corp., 859 F.2d 878, 889 (Fed. Cir. 1988) (citations omitted).
When an accused infringer moves for summary judgment of non-infringement, such relief may be granted only if one or more limitations of the claim in question does not read on an element of the accused product, either literally or under the doctrine of equivalents. See Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1376 (Fed. Cir. 2005); see also TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1369 (Fed. Cir. 2002) ("Summary judgment of noninfringement is ... appropriate where the patent owner's proof is deficient in meeting an essential part of the legal standard for infringement, because such failure will render all other facts immaterial."). Thus, summary judgment of non-infringement can only be granted if, after viewing the facts in the light most favorable to the non-movant, there ...