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Alcon Research, Ltd. v. Watson Laboratories, Inc.

United States District Court, D. Delaware

November 9, 2017

ALCON RESEARCH, LTD., Plaintiff,
v.
WATSON LABORATORIES, INC., Defendant.

          MEMORANDUM ORDER

          HON. LEONARD P. STARK UNITED STATES DISTRICT JUDGE.

         WHEREAS, Magistrate Judge Fallon issued a Report and Recommendation (D.I. 58) on February 15, 2017, recommending that the Court adopt certain claim constructions for disputed terms in U.S. Patent Nos. 7, 947, 295 and 8, 921, 337;

         WHEREAS, on March 1, 2017, Watson Laboratories, Inc. ("Watson") objected to the Report (D.I. 63), specifically objecting to recommended construction of the "viscosity" term;

         WHEREAS, on March 1, 2017, Alcon Research, Ltd. ("Alcon") objected to the Report (D.I. 62), specifically objecting to recommended construction of the "particle size" term;

         WHEREAS, on March 15, 2017, Alcon responded to Watson's objections (D.I. 72) and Watson responded to Alcon's objections (D.I. 73);

         WHEREAS, the Court has considered the parties' claim construction disputes addressed in the Report de novo, see St. Clair Intellectual Prop. Consultants, Inc. v. Matsushita Elec. Indus. Co., Ltd., 691 F.Supp.2d 538, 541-42 (D. Del. 2010); 28 U.S.C. § 636(b)(1); Fed.R.Civ.P. 72(b)(3);

         NOW THEREFORE, IT IS HEREBY ORDERED that:

         1. Watson's objections (D.I. 63) are OVERRULED, Alcon's objections (D.L 62) are OVERRULED, and Judge Fallon's recommended constructions (D.L 58) are ADOPTED.

         2. Watson objects to the recommendation that the term "a viscosity enhancing amount of combination of two polymers having a synergistic effect on the composition's viscosity and wherein the combination of two polymers is selected from the group consisting of hydroxypropyl methylcellulose and guar gum; a carboxyvinyl polymer and guar gum; and hyaluronic acid and guar gum" requires no construction.[1] (See D.L 58 at 7-12) Watson contends that the patent contains a clear disavowal of claim scope, making it appropriate to require "that if the composition comprises a carboxyvinyl polymer then the composition does not contain sodium chloride or boric acid." (D.L 63 at 1-2)

         As the Report observes, "Watson's argument hinges primarily on one sentence in the detailed description of the invention which refers to 'the compositions of the present invention, ' but does not precisely indicate that it encompasses all embodiments." (D.L 58 at 11) (quoting '295 patent col. 3 11. 26-33) In particular, Watson relies on the following passage in the specification:

If the compositions contain a carbomer [i.e., a carboxyvinyl polymer] as one of the two polymers, then the compositions of the present invention do not contain any ionic tonicity-adjusting agent, such as sodium chloride, or other ionic excipients, such as boric acid, as these ingredients have a significant, detrimental effect on the composition's viscosity.

'295 patent col. 3 11. 26-33. The Court is not persuaded that, in the context of the patent as a whole, this sentence amounts to a clear and unmistakable disavowal. The patent goes on to clarify the concern with using ionic excipients in combination with a carbomer:

If the compositions contain a carbomer, it is critical that the compositions are formulated so that the target pH is not exceeded. Once a target pH has been exceeded in compositions containing a carbomer, adding an acid such as hydrochloric acid to adjust the pH downward can compromise the synergistic viscosity. It is known that relatively small amounts of acid or salts, on the order of 0.005%, can have a significant effect on the viscosity of compositions containing a carbomer.

Col. 3 11. 35-44. This passage teaches that the issue with acids or salts is that, once the pH is in the optimal range, small amounts of ionic excipients can negatively impact viscosity. But the passage does not suggest that ionic excipients are always inappropriate to use, such as for the purpose of achieving the targeted pH. Indeed, Example 1 uses ionic excipients (sodium hydroxide and ...


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