United States District Court, D. Delaware
B. BRAUN MELSUNGEN AG, B. BRAUN MEDICAL INDUSTRIES SDN. BHD. and B. BRAUN MEDICAL, INC., Plaintiffs;
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
ANDREWS, U4 DISTRICT JUDGE.
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.
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.
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).
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).
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).
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.
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).
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).