United States District Court, D. Delaware
DELCOR ASSET CORP. and MYLAN PHARMACEUTICALS INC., Plaintiffs,
GLENMARK PHARMACEUTICALS LTD., GLENMARK PHARMACEUTICALS INC., USA, and STIEFEL WEST COAST, LLC, Defendants.
before the Court is the issue of claim construction of
multiple terms in U.S. Patent Nos. 7, 141, 237 ("the
'237 patent") and 7, 374, 747 ("the '747
patent"). I have considered the parties' joint claim
construction brief. (D.I. 84). I heard oral argument on
October 19, 2018.
November 15, 2017, Delcor Asset Corp. ("Delcor")
and Mylan Pharmaceuticals Inc. ("Mylan") brought
this action against Glenmark Pharmaceuticals Ltd. and
Glenmark Pharmaceuticals Inc., USA (collectively
"Glenmark"), and Stiefel West Coast, LLC
("Stiefel") for infringement of the '237 and
'747 patents. This action relates to Abbreviated New Drug
Application ("ANDA") No. 210778, filed by Glenmark
for approval to market a generic version of the branded
product Evoclin. (D.I. 1 ¶ 1). Mylan holds the NDA on
Evoclin and Delcor is the exclusive licensee of the '237
and '747 patents. (D.I. 1 ¶¶ 19-20). Stiefel
owns the asserted patents but was joined as an involuntary
defendant and has taken no position on the issues in this
case. (D.I. 1 ¶ 5;
D.I. 84 at 8 n.4).
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) (en banc) (citation
omitted). '"[T]here is no magic formula or catechism
for conducting claim construction.' Instead, the court is
free to attach the appropriate weight to appropriate sources
'in light of the statutes and policies that inform patent
law.'" SoftView LLC v. Apple Inc., 2013 WL
4758195, at *1 (D. Del. Sept. 4, 2013) (quoting
Phillips, 415 F.3d at 1324). When construing patent
claims, a court considers the literal language of the claim,
the patent specification, and the prosecution history.
Markman v. Westview Instruments, Inc., 52 F.3d 967,
979-80 (Fed. Cir. 1995) (en banc), aff'd, 517
U.S. 370 (1996). Of these sources, "the 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." Phillips, 415
F.3d at 1315.
words of a claim are generally given their ordinary and
customary meaning. . . . [This 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. "[T]he ordinary meaning of a
claim term is its meaning to [an] ordinary artisan after
reading the entire patent." Id. at 1321.
"In some cases, the ordinary meaning of claim language
as understood by a person of skill in the art may be readily
apparent even to lay judges, and claim construction in such
cases involves little more than the application of the widely
accepted meaning of commonly understood words."
Id. at 1314.
court relies solely upon the intrinsic evidence-the patent
claims, the specification, and the prosecution history-the
court's construction is a determination of law. See
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831,
841 (2015). The court may also make factual findings based
upon consideration of extrinsic evidence, which
"consists of all evidence external to the patent and
prosecution history, including expert and inventor testimony,
dictionaries, and learned treatises." Phillips,
415 F.3d at 1317-19. Extrinsic evidence may assist the court
in understanding the underlying technology, the meaning of
terms to one skilled in the art, and how the invention works.
Id. Extrinsic evidence, however, is less reliable
and less useful in claim construction than the patent and its
prosecution history. Id.
claim construction is persuasive, not because it follows a
certain rule, but because it defines terms in the context of
the whole patent." 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) (citation
PATENTS AT ISSUE
'747 patent is a continuation of the '237 patent and
the specifications are substantively identical. (D.I. 84 at 6
n.3). The '237 patent has four independent claims-claims
1, 28, 32, and 33-all of which are asserted. I believe claim
1 may be considered representative for the purposes of claim
construction. The '747 patent has only one independent
of the '237 patent reads:
topical delivery composition in a pressurized container, said
up to 15% w/w of clindamycin phosphate;
from about 83% to about 97.9% w/w of a quick-breaking
foaming agent, wherein said quick-breaking foaming
agent comprises a C1-C6 alcohol, a C14-C22 alcohol,
water, and a surfactant; and
from about 2% to about 7% w/w of an aerosol propellant
selected from the group consisting of a hydrocarbon, a
chlorofluorocarbon, dimethyl ether, ...