United States District Court, D. Delaware
E. Farnan and Christine D. Haynes, RICHARDS, LAYTON &
FINGER, P.A., Wilmington, DE; Dominick A. Conde, Christopher
P. Borello (argued), Brendan M. O'Malley (argued), and
Damien N. Dombrowski (argued), VENABLE LLP, New York, NY,
attorneys for Plaintiff.
B. Blumenfeld and Jeremy A. Tigan, MORRIS, NICHOLS, ARSHT
& TUNNELL LLP, Wilmington, DE; Martin J. Black, Kevin M.
Flannery (argued), Robert Ashbrook and Sharon K. Gagliardi,
DECHERT LLP, Philadelphia, PA; Blake B. Greene (argued),
DECHERT LLP, Austin, TX, attorneys for Defendants.
ANDREWS, U.S. DISTRICT JUDGE
pending before the Court are Plaintiffs motion for partial
summary judgment of no invalidity by anticipation (D.I. 126)
and Defendants' motion for summary judgment of invalidity
by lack of enablement. (D.I. 122). The parties have fully
briefed the issues. (D.I. 190, 195, 208, 212, 216, 220). The
Court heard oral argument on March 4, 2016. (Hr'g
Vectura Limited sued Defendants Glaxo SmithKline LLC and
Glaxo Group Limited on July 27, 2016 alleging infringement of
U.S. Patent Nos. 8, 303, 991 ("the '991
patent") and 8, 435, 567 ("the '567
patent"). (D.I. 1). Plaintiff has narrowed its
infringement allegations to claim 3 of the '991 patent
and claim 3 of the '567 patent ("the Asserted
Claims"). The patents-in-suit "relate to
pharmaceutical compositions for inhalation and methods of
making them." (D.I. 82 at 1). The asserted claims are
dependent claims which cover only compositions where the
additive is magnesium stearate. (D.I. 195 at 9).
August 10, 2018, the parties made various motions for summary
judgment. Plaintiff moved for partial summary judgment of no
invalidity by anticipation. (D.I. 126). Defendants moved for
summary judgment of non-infringement (D.I. 120) and of
invalidity by lack of enablement (D.I. 122). On October 1,
2018, 1 issued my claim construction opinion, and
subsequently, the claim construction order. (D.I. 167; D.I.
169). The parties had exchanged expert reports prior to the
opinion, and my constructions of the claim terms differed
from that of either party. I then permitted supplemental
expert discovery between the parties and amended summary
judgment briefing. (D.I. 176). The parties have exchanged
supplemental expert discovery and amended their previous
summary judgment briefing. At oral argument, I denied
Defendants' motion for summary judgment of
non-infringement. (D.I. 246). I now address the parties'
remaining dispositive motions.
court shall grant summary judgment if the movant shows that
there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law."
Fed.R.Civ.P. 56(a). The moving party has the initial burden
of proving the absence of a genuinely disputed material fact
relative to the claims in question. Celotex Corp. v.
Catrett, 477 U.S. 317, 330 (1986). Material facts are
those "that could affect the outcome" of the
proceeding, and "a dispute about a material fact is
'genuine' if the evidence is sufficient to permit a
reasonable jury to return a verdict for the nonmoving
party." Lamont v. New Jersey, 637 F.3d 177, 181
(3d Cir. 2011) (quoting Anderson v. Liberty Lobby, Inc.,
411 U.S. 242, 248 (1986)). The burden on the moving
party may be discharged by pointing out to the district court
that there is an absence of evidence supporting the
non-moving party's case. Celotex, 411 U.S. at
burden then shifts to the non-movant to demonstrate the
existence of a genuine issue for trial. Matsushita Elec.
Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87
(1986); Williams v. Borough of West Chester, Pa.,
891 F.2d 458, 460-61 (3d Cir. 1989). A non-moving party
asserting that a fact is genuinely disputed must support such
an assertion by: "(A) citing to particular parts of
materials in the record, including depositions, documents,
electronically stored information, affidavits or
declarations, stipulations . . ., admissions, interrogatory
answers, or other materials; or (B) showing that the
materials cited [by the opposing party] do not establish the
absence ... of a genuine dispute . . .." Fed.R.Civ.P.
determining whether a genuine issue of material fact exists,
the court must view the evidence in the light most favorable
to the non-moving party and draw all reasonable inferences in
that party's favor. Scott v. Harris, 550 U.S.
372, 380 (2007); Wishkin v. Potter, 476 F.3d 180,
184 (3d Cir. 2007). A dispute is "genuine" only if
the evidence is such that a reasonable jury could return a
verdict for the non-moving party. Anderson, 477 U.S.
at 247-49. If the non-moving party fails to make a sufficient
showing on an essential element of its case with respect to
which it has the burden of proof, the moving party is
entitled to judgment as a matter of law. See Celotex
Corp., 477 U.S. at 322.
patent claim is invalid as anticipated under 35 U.S.C. §
102 if "within the four corners of a single, prior art
document. . . every element of the claimed invention [is
described], either expressly or inherently, such that a
person of ordinary skill in the art could practice the
invention without undue experimentation." Callaway
Golf Co. v. Acushnet Co.,576 F.3d 1331, 1346 (Fed. Cir.
2009) (alterations in original). As with infringement, the
court construes the claims and compares them against the
prior art. See Enzo Biochem, Inc. v. Appier a Corp.,599 F.3d 1325, 1332 (Fed. Cir. 2010). Anticipation "may
be decided on summary judgment if the record ...