United States District Court, D. Delaware
E. Farnan and Christine D. Haynes, RICHARDS, LAYTON &
FINGER, P.A., Wilmington, DE James F. Hurst, KIRKLAND &
ELLIS LLP, Chicago, IL Patricia A. Carson, Christopher T.
Jagoe, and Aaron D. Resetarits, KIRKLAND & ELLIS LLP, New
York, NY Attorneys for Plaintiff.
B. Blumenfeld and Brian P. Egan, MORRIS, NICHOLS, ARSHT &
TUNNELL LLP, Wilmington, DE Michael A. Morin, David P.
Frazier, and Emily K. Sauter, LATHAM & WATKINS LLP,
Washington, DC Roger J. Chin, LATHAM & WATKINS LLP, San
Francisco, CA Michael R. Seringhaus, LATHAM & WATKINS
LLP, Menlo Park, CA Attorneys for Defendants.
U.S. DISTRICT JUDGE
patent infringement action, Plaintiff MorphoSys AG alleges
that Defendants Janssen Biotech, Inc., Genmab US, Inc., and
Genmab A/S (collectively, “Janssen”), and
specifically Janssen's Darzalex (daratumumab) anti-CD38
antibody used for the treatment of patients with multiple
myeloma, infringe MorphoSys' U.S. Patent Nos. 8, 263, 746
and 9, 200, 061, which generally describe and claim anti-CD38
human antibodies and methods of treating hematologic cancer
with such antibodies. Presently before the Court is the issue
of claim construction. The parties submitted technology tutorials
(D.I. 85, 88) and claim construction briefs (see
D.I. 147, 150, 168, 169). Both parties also submitted expert
declarations (see D.I. 148, 151, 170, 171), which
the Court has considered. The Court held a claim construction
hearing on August 28, 2017. (See D.I. 196
ultimate question of the proper construction of a patent is a
question of law. See Teva Pharm. USA, Inc. v. Sandoz,
Inc., 135 S.Ct. 831, 837 (2015) (citing Markman v.
Westview Instruments, Inc., 517 U.S. 370, 388-91
(1996)). “It is a bedrock principle of patent law that
the claims of a patent define the invention to which the
patentee is entitled the right to exclude.”
Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (internal quotation marks omitted). “[T]here
is no magic formula or catechism for conducting claim
construction.” Id. at 1324. Instead, the court
is free to attach the appropriate weight to appropriate
sources “in light of the statutes and policies that
inform patent law.” Id.
words of a claim are generally given their ordinary and
customary meaning . . . [which is] the meaning that the term
would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the
effective filing date of the patent application.”
Id. at 1312-13 (internal citations and quotation
marks omitted). “[T]he ordinary meaning of a claim term
is its meaning to the ordinary artisan after reading the
entire patent.” Id. at 1321 (internal
quotation marks omitted). The patent specification “is
always highly relevant to the claim construction analysis.
Usually, it is dispositive; it is the single best guide to
the meaning of a disputed term.” Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
“the claims themselves provide substantial guidance as
to the meaning of particular claim terms, ” the context
of the surrounding words of the claim also must be
considered. Phillips, 415 F.3d at 1314. Furthermore,
“[o]ther claims of the patent in question, both
asserted and unasserted, can also be valuable sources of
enlightenment . . . [b]ecause claim terms are normally used
consistently throughout the patent . . . .”
Id. (internal citation omitted).
likewise true that “[d]ifferences among claims can also
be a useful guide . . . . For example, the presence of a
dependent claim that adds a particular limitation gives rise
to a presumption that the limitation in question is not
present in the independent claim.” Id. at
1314-15 (internal citation omitted). This “presumption
is especially strong when the limitation in dispute is the
only meaningful difference between an independent and
dependent claim, and one party is urging that the limitation
in the dependent claim should be read into the independent
claim.” SunRace Roots Enter. Co., Ltd. v. SRAM
Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003).
also possible that “the specification may reveal a
special definition given to a claim term by the patentee that
differs from the meaning it would otherwise possess. In such
cases, the inventor's lexicography governs.”
Phillips, 415 F.3d at 1316. It bears emphasis that
“[e]ven when the specification describes only a single
embodiment, the claims of the patent will not be read
restrictively unless the patentee has demonstrated a clear
intention to limit the claim scope using words or expressions
of manifest exclusion or restriction.” Hill-Rom
Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed.
Cir. 2014) (quoting Liebel-Flarsheim Co. v. Medrad,
Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)) (internal
quotation marks omitted).
addition to the specification, a court “should also
consider the patent's prosecution history, if it is in
evidence.” Markman v. Westview Instruments,
Inc., 52 F.3d 967, 980 (Fed. Cir. 1995),
aff'd, 517 U.S. 370 (1996). The prosecution
history, which is “intrinsic evidence, ”
“consists of the complete record of the proceedings
before the PTO [Patent and Trademark Office] and includes the
prior art cited during the examination of the patent.”
Phillips, 415 F.3d at 1317. “[T]he prosecution
history can often inform the meaning of the claim language by
demonstrating how the inventor understood the invention and
whether the inventor limited the invention in the course of
prosecution, making the claim scope narrower than it would
otherwise be.” Id.
cases, “the district court will need to look beyond the
patent's intrinsic evidence and to consult extrinsic
evidence in order to understand, for example, the background
science or the meaning of a term in the relevant art during
the relevant time period.” Teva, 135 S.Ct. at
841. Extrinsic evidence “consists of all evidence
external to the patent and prosecution history, including
expert and inventor testimony, dictionaries, and learned
treatises.” Markman, 52 F.3d at 980. For
instance, technical dictionaries can assist the court in
determining the meaning of a term to those of skill in the
relevant art because such dictionaries “endeavor to
collect the accepted meanings of terms used in various fields
of science and technology.” Phillips, 415 F.3d
at 1318. In addition, expert testimony can be useful
“to ensure that the court's understanding of the
technical aspects of the patent is consistent with that of a
person of skill in the art, or to establish that a particular
term in the patent or the prior art has a particular meaning
in the pertinent field.” Id. Nonetheless,
courts must not lose sight of the fact that “expert
reports and testimony [are] generated at the time of and for
the purpose of litigation and thus can suffer from bias that
is not present in intrinsic evidence.” Id.
Overall, while extrinsic evidence “may be useful”
to the court, it is “less reliable” than
intrinsic evidence, and its consideration “is unlikely
to result in a reliable interpretation of patent claim scope
unless considered in the context of the intrinsic
evidence.” Id. at 1318-19. Where the intrinsic
record unambiguously describes the scope of the patented
invention, reliance on any extrinsic evidence is improper.
See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182
F.3d 1298, 1308 (Fed. Cir. 1999) (citing Vitronics,
90 F.3d at 1583).
“[t]he construction that stays true to the claim
language and most naturally aligns with the patent's
description of the invention will be, in the end, the correct
construction.” Renishaw PLC v. Marposs Societa'
per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It
follows that “a claim interpretation that would exclude
the inventor's device is rarely the correct
interpretation.” Osram GmbH v. Int'l Trade
Comm'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007)
(quoting Modine Mfg. Co. v. U.S. Int'l Trade
Comm'n, 75 F.3d 1545, 1550 (Fed. Cir. 1996)).