Wyeth Llc v. Intervet Inc.

771 F.Supp.2d 334

2011 Markman 1043575

WYETH, LLC, Plaintiff,

v.INTERVET, INC., d/b/a Intervet/Schering–Plough Animal Health, Defendant.

C.A. No. 09–161–LPS.

United States District Court, D. Delaware.

March 22, 2011.

Steven J. Balick, Esquire, Tiffany Geyer Lydon, Esquire, and Caroline Hong, Esquire of Ashby & Geddes, P.A., Wilmington, DE, Eric J. Marandett, Esquire, Wendy S. Plotkin, Esquire, and G. Mark Edgarton, Esquire of Choate, Hall & Stewart LLP, Boston, MA, for Plaintiff.Gregory B. Williams, Esquire of Fox Rothschild LLP, Wilmington, DE, William James, Esquire and Yari Waks, Esquire of Kenyon & Kenyon LLP, Washington, D.C., Michael D. Loughnane, Esquire and Patrice P. Jean, Ph.D., Esquire of Kenyon & Kenyon LLP, New York, NY, for Defendants.

MEMORANDUM OPINION

STARK, District Judge:

Plaintiff, Wyeth, LLC (“Wyeth”), filed this patent infringement action against Defendants, Intervet, Inc. (“Intervet”) and Boehxinger Ingelheim Vetmedica Inc. (“Vetmedica”), on March 12, 2009. (D.I. 1) Vetmedica was dismissed on My 13, 2010. (D.I. 125) Wyeth alleges that Intervet infringes seven of its patents related to porcine circovirus vaccines: U.S. Patent No. 6,703,023 (the “'023 patent”),¹ U.S. Patent No. 7,223,407 (the “'407 patent”),² U.S. Patent No. 7,223,594 (the “'594 patent”), ³ U.S. Patent No. 7,407,803 (the “'803 patent”),⁴ U.S. Patent No. 7,604,808 (the “'808 patent”),⁵ U.S. Patent No. 7,772,883 (the “'883 patent”),⁶ and U.S. Patent No. 7,740,886 (the “'886 patent”) ⁷ (collectively, the “patents-in-suit”). (D.I. 1) Intervet filed counterclaims seeking declaratory judgments that Intervet's accused product does not infringe the asserted claims and the asserted claims are invalid. (D.I. 14) Presently before the Court is the matter of claim construction.

I. BACKGROUNDA. Procedural Background

Briefing on claim construction was completed on October 29, 2010. (D.I. 159; D.I. 160; D.I. 169; D.I. 171) The Court held a Markman hearing on November 9, 2010. See Claim Construction Hr'g Tr., November 9, 2010 (D.I. 180) (hereinafter “Tr.”).

B. The Patents–In–Suit

The patents-in-suit are directed to vaccines, vaccine components, and recombinant DNA techniques for making vaccines that protect livestock pigs from a viral disease referred to in the patents-in-suit as Piglet Wasting Disease (“PWD”). The same disease is also known as Post–Weaning Multisystemic Wasting Syndrome (“PMWS”) and Fatal Piglet Wasting (“FPW”). Porcine circoviruses—viruses containing circular single-stranded DNA—have been associated with PWD. The patents-in-suit issued in 2004 (the '023 patent), 2007 (the '407 and '594 patents), 2008 (the '803 patent), 2009 (the ' 808 patent), and 2010 (the '866 and '883 patents). They all stem from a French patent application filed on December 5, 1997 and, therefore, share a common specification. The claims were divided among the seven patents-in-suit pursuant to a restriction requirement issued by a U.S. Patent and Trademark Office (“PTO”) Examiner during prosecution of the initial U.S. application.

C. The Asserted Claims

Wyeth asserts ninety claims against Intervet. (D.I. 159 Ex. C) They are: claims 1, 3, 5, and 7 from the '023 patent; claims 1–2, 5–6, 9–10, 13–14, 17, 21–23, and 27–28 of the '407 patent; claims 1–2, 5–6, 9–10, 13–14, 17–19, 23–25, 28, 35–36, 39–40, 43–44, and 47–48 of the '594 patent; claims 1–4 and 11–15 of the '803 patent; claims 1, 4, 7–20, 23–24, and 27–30 of the '808 patent; claims 10 and 16 of the '883 patent; and, finally, claims 30–31, 34, 37, 43–46, 48–52, 56–57, and 60 of the '886 patent.

D. The Disputed Terms

The parties present three disputed terms. The first is actually a group of five terms that the parties agree have the same meaning. The five grouped terms are: “porcine circovirus type B,” “PCVB,” “type B porcine circovirus,” “porcine circovirus-B,” and “PCV–B” (collectively “PCVB”). These terms appear in thirty-one asserted claims.⁸ ( See D.I. 159 Ex. B)

The second disputed term is actually the whole of claim 1 of the '023 patent. As discussed below, Intervet's proposed construction reveals that three terms in claim 1 are really in dispute: “vaccine,” “nucleic acid,” and “encoding.”

The final disputed term is “amplifying said nucleic acid,” which appears only in claim 25 of the '594 patent,

A representative claim containing the term PCVB is reproduced below, along with claim 1 of the '023 patent and claim 25 of the '594 patent. The disputed terms are highlighted,

A method for treating or preventing porcine circovirus type B infection in a mammalian subject, comprising administering to said subject a therapeutically effective amount of a vaccine according to claim 5.

('407 patent, claim 13)

A vaccine comprising a nucleic acid having a nucleotide sequence with at least 90% sequence identity to SEQ ID No. 25 and an acceptable pharmaceutical vehicle, wherein said nucleic acid encodes an immunogenic protein that induces a protective response effective against infection by a piglet weight loss disease circovirus.

('023 patent, claim 1)

The method of claim 23, said method further including the step of amplifying said nucleic acid from a strain of PCVB prior to cloning said nucleic acid into said transfer vector.

('594 patent, claim 25)

II. LEGAL STANDARDS

“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). Construing the claims of a patent presents a question of law. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 977–78 (Fed.Cir.1995), aff'd, 517 U.S. 370, 388–90, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). “[T]here is no magic formula or catechism for conducting claim construction.” Phillips, 415 F.3d 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.

“[T]he 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).

While “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).

It is 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).

It is 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.” Liebel–Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed.Cir.2004) (internal quotation marks omitted), aff'd, 481 F.3d 1371 (Fed.Cir.2007).

In addition to the specification, a court “should also consider the patent's prosecution history, if it is in evidence.” Markman, 52 F.3d at 980. 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.

A court also may rely on “extrinsic evidence,” which “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 ordinary skill in the art, or to establish that a particular term in the...