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B. Braun Melsungen AG v. Becton, Dickinson & Co.

United States District Court, D. Delaware

June 9, 2017

B. BRAUN MELSUNGEN AG, B. BRAUN MEDICAL INDUSTRIES SDN. BHD. and B. BRAUN MEDICAL, INC., Plaintiffs;
v.
BECTON, DICKINSON AND COMPANY and BECTON, DICKINSON INFUSION THERAPY SYSTEMS, INC. Defendants.

          Frederick L. Cottrell, Esq., RICHARDS, LAYTON & FINGER, P.A., Wilmington, DE; Katharine L. Mowery, Esq., RICHARDS, LAYTON & FINGER, P.A., Wilmington, DE; Nicole K. Pedi, Esq., RICHARDS, LAYTON & FINGER, P.A., Wilmington, DE; William F. Lee, Esq. (argued), WILMER CUTLER PICKERING HALE AND DORR LLP, Boston, MA; William G. McElwain, Esq., WILMER CUTLER PICKERING HALE AND DORR LLP, Washington, DC; Tracey C. Allen, Esq., WILMER CUTLER PICKERING HALE AND DORR LLP, Washington, DC; Omar A. Khan, Esq., WILMER CUTLER PICKERING HALE AND DORR LLP, New York, NY.

          Attorneys for Plaintiffs Gregory E. Stuhlman, Esq., GREENBERG TRAURIG, LLP, Wilmington, DE; Scott J. Bornstein, Esq. (argued), GREENBERG TRAURIG, LLP, New York, NY; Allan A. Kassenoff, Esq., GREENBERG TRAURIG, LLP, New York, NY; Joshua L. Raskin, Esq., GREENBERG TRAURIG, LLP, New York, NY. Attorneys for Defendants

          MEMORANDUM OPINION

          ANDREWS, U4 DISTRICT JUDGE.

         Presently before the Court is Defendants' Motion for Judgment on the Pleadings (D.I. 41) and related briefing (D.I. 42, 51, 53). The Court heard oral argument on March 3, 2017. (D.I. 103) ("Hr'g Tr."). Through this motion, Defendants seek dismissal of Counts Nine, Ten, and Eleven of Plaintiffs' First Amended Complaint (D.I. 16) on the grounds that three of the patents-in-suit, U.S. Patent No. 8, 444, 605 ("the '605 patent"), U.S. Patent No. 8, 414, 539 ("the '539 patent"), and U.S. Patent No. 8, 545, 454 ("the '454 patent") (collectively, "the Kuracina patents"), are invalid under 35 U.S.C. § 102(b) in light of U.S. Patent No. 6, 629, 959 ("the '959 patent"). For the reasons that follow, the Court will deny Defendant's Motion for Judgment on the Pleadings.

         I. Background

         Plaintiff brought this infringement action on June 6, 2016, alleging infringement often patents. (D.I. 1). On July 25, 2016, Plaintiff filed its First Amended Complaint adding an additional count alleging infringement of an eleventh patent. (D.I. 16). The three Kuracina patents that are the subject of this motion issued on April 9, 2013 (the '539 patent), May 21, 2013 (the '605 patent), and October 1, 2013 (the '454 patent). (D.I. 51 at 7). At issue is the priority of the claims for each of these three patents.

         The Kuracina patents are part of a family of related patents and applications dating back to a provisional application, U.S. Provisional Application No. 60/012, 343, filed on February 27, 1996. (Id.). Each of the Kuracina patents include as the first sentence in its specification the statement, "This application is related to and claims the benefit of the following patent applications: (1) Ser. No. 60/012, 343 . . . filed Feb. 27, 1996 . . . the teachings of which are expressly incorporated herein and by reference." ('605 patent at 1:4-5). Ten applications are listed in this chain of priority. (Id.). The statement in each of the Kuracina patents fails to indicate how the applications in the chain are interrelated. The applicant submitted an application data sheet ("ADS") during prosecution of the '605 and '454 patents, claiming priority through a number of applications, the earliest of which was filed on February 24, 2005. (D.I. 43-8 at 4; D.I. 43-9 at 4). The applicant did not submit an ADS during prosecution of the '539 patent, which was filed on December 27, 2011. (D.I. 42 at 9).

         Among the applications listed in the priority chain is the application that ultimately issued as the '959 patent, which was filed on April 30, 2001. ('605 patent at 1:20-23). The '959 patent issued on October 7, 2003 and its specification "is virtually identical to that of the Kuracina Patents." (D.I. 42 at 9).

         In August 2015, Plaintiffs requested certificates of correction for the Kuracina patents under 35 U.S.C. § 255 to add language identifying the relationships between each of the applications listed in the chain of priority. (D.I. 43-10 at 198, 203, 208). In each request, Plaintiffs stated, "None of the requested corrections involve claiming any new priority not previously claimed." (Id.). The requested certificates of correction were granted for each of the three patents in February and March of 2016. (D.I. 52-5 at 29-36).

         II. Legal Standard

         A party may move for judgment on the pleadings "[a]fter pleadings are closed - but early enough not to delay trial." Fed.R.Civ.P. 12(c). In evaluating the motion, the Court must accept all factual allegations in the complaint as true and all inferences must be drawn in the light most favorable to the nonmoving party. Rosenau v. Unifund Corp., 539 F.3d 218, 221 (3rd Cir. 2008). The motion will be granted only if the movant establishes there is no remaining material issue of fact and the movant is entitled to judgment as a matter of law. Id.

         In ruling on a motion for judgment on the pleadings, the court is generally limited to the pleadings. Mele v. Fed. Reserve Bank of N.Y., 359 F.3d 251, 257 (3d Cir. 2004). The court may, however, consider documents incorporated into the pleadings and those that are in the public record. Pension Ben. Guar. Corp. v. White Consol. Indus., Inc., 998 F.2d 1192, 1196 (3d Cir. 1993).

         Patent claims enjoy a presumption of validity. 35 U.S.C. § 282(a). Thus, challenges to the validity of patent claims are evaluated under the clear and convincing evidence standard. Kaufman Co. v. Lantech, Inc., 807 F.2d 970, 973 (Fed. Cir. 1986). The present dispute is, at its core, a dispute about the validity of certificates of correction. If the Court were to invalidate these certificates, however, the practical effect would be to invalidate the claims. Therefore, Defendant bears the burden of proving that the certificates of correction are invalid by clear and convincing evidence. Superior Fireplace Co. v. Majestic Prod. Co., 270 F.3d 1358, 1367 (Fed. Cir. 2001).

         III. ...


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