Free Letter - District Court of Delaware - Delaware

Case 1:05-cv-00029-JJF Document 75 Filed O9/23/2005 Paget of 3
Yourrc CONAWAY STARGATT & TAYLOR, LLP
THE BRANr>YwrNE Burrnmc
1000 WEST STREET, 17TH Froos
Josv W. INcERsoLL (N0. 1088) W1LMmcToN, DELAWARE 19801 (302) 571-6600
DrREcrD1AL: 302-571-6672 (302)571—1253 EAx
D1aEcTEAx: 302-576-3301 P.O. Box 391 (800) 253-2234 (DE ONLY)
[email protected] W]LM[NGTQN,DELAWAR_E19899-039] Q WWW.y0ungc0naWay.c0m
September 23, 2005
BY E—FILE
The Honorable Joseph J. Faman, Jr. A
United States District Court
844 King Street
Wilmington, DE 19801
p , Re: Cephalon, Inc., et al. v. Barr Laboratories, Inc.
Civil Action No. 05-29-JJF
Dear Judge Farnan:
I write pursuant to Local Rule 7.1.2(c) to bring to the Court’s attention the Federal
Circuit’s recent decision in Nystram v. T rex C0., Inc., No. 03-1092, 2005 WL 2218632 (Fed. Cir.
‘ Sept. 14, 2005) (attached hereto).
As you know, Defendant Barr Laboratories, Inc. ("Barr") submitted its Response
Brief on Claim Construction for U.S. Patent No. 5,863,737 ("the 737 Patent”) on July 29th.
1 Plaintiffs filed their Reply Brief in support of their claim construction on August 17th. This
i Court held a Mczrlmmn hearing on September 14th. That same day, the Federal Circuit released
its decision in Nystrom. This letter briefly discusses the impact of the Nystrcm decision on claim
construction issues pertinent to the present litigation. The case is significant because it confirms
Phillips v. AWH C0rp.’s reliance on the specification in determining the proper construction of
the claims}
In Nystrom, the Federal Circuit construed the claims of a patent directed to
materials used for exterior flooring, such as a deck. 2005 WL 2218632 at *1. Specifically, the
Federal Circuit considered whether the claim term "board" was limited to "material made from
wood cut from a log." Id. at *4. The plaintiff-patentee argued that "board" should not be so
limited because the specification, while referring to "wood”, "[did] not represent a clear
disavowal of claim scope.” Id. The plaintiff also argued that there was no unambiguous
. disavowal in the prosecution history. Id.
i The Federal Circuit rejected plaintiffs arguments, holding that "[a]lthough there
l was no clear disavowal of claim scope, there was nothing in the intrinsic record" to demonstrate
that the terms should be interpreted more broadly. Id. at *7. In reaching its conclusion, the
Federal Circuit relied heavily on its recent opinion in Phillips, which held that claim terms
' 415 F.3d 1303 (Fed. Cir. 2005).
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Yoursic CoNAwAY STARGATT & TAYLOR, LLP
The Honorable Joseph J. Faman, Jr.
September 23, 2005
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should be given "tlre meaning that the term[s] would have to a person of ordinary skill in the art
at the time of the invention [viewed] in the light ofthe entire intrinsic record." Nystrom,
2005 WL 2218632 at *4 (quotation marks and citations omitted, emphasis added). Indeed, the
Federal Circuit noted that "[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? Id. (quotation marks and citations omitted).
With the teachings of Phillips in mind, the Federal Circuit concluded in Nystrom
that the term "board" must be limited to items made of wood. Nystrom, 2005 WL 2218632 at
*7-8. Indeed, the court noted, "[t]he Background ofthe Invention frames the invention in the
context of wood decking materials cut from logs, even though it acknowledges that other
materials exist [and that] context is maintained throughout the written description." Id. at *5-
6. Furthermore, the court reasoned, even absent the finding of a "clear disavowal of claim
scope,” the claim must be limited because of the patentee’s "consistent use of the term" as
limited to wood in the specification. Id. at 6. The Federal Circuit further declared:
What Phillips now counsels is that in the absence of something in
the written description and/or prosecution history to provide
A explicit or implicit notice to the public--i.e., those of ordinary skill
in the art-—that the inventor intended a disputed tenn to cover more
than the ordinary and customary meaning revealed by the context
ofthe intrinsic record, it is improper to read the term to encompass
a broader definition simply because it may be found in a
dictionary, treatise, or other extrinsic source.
Id. at 7 (emphasis added). As a result, because of the absence of support in the intrinsic record
for a broad meaning of the term, the Federal Circuit reasoned that plaintiff s expansive
interpretation must be rejected. Id. at 7-8.
The parallels between Nystrom and the present case are striking. Here, Plaintiffs
argue for an expanded construction of claim terms to encompass the use of liquid in making
lollipop dosage forms. Plaintiffs’ proposed construction is based largely on abstract definitions
that ignore the intrinsic record. Like Nystrom, the specification of the ‘737 patent clearly
demonstrates that the terms are more limited; the invention is directed "to compositions and
methods of manufacture of compressed powder matrixes for medicaments used in the
transmucosal delivery of the medicaments." ‘73 7 Patent, Col. 1 ll. 18-21 (the opening paragraph
of the "Background" section) (emphasis added). As in Nystrom, the allegedly inventive step of
mixing dry, solid powders is described and maintained throughout the written description and
l therefore, even absent a clear disavowal, there is no support for the conclusion that the ordinary
artisan would have construed the ‘737 patent to cover more than dry mixing and compression of
dry powders. Plaintif`f`s’ construction, on the other hand, does not take account of the
overwhelming evidence in the specification and prosecution history that the invention was of
mixing dry powders. L
usorrissssnr 0639s7.1001

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Yotme CoNAwAY STARGATT & TAYLOR, LLP
The Honorable Joseph J. Farnan, Jr.
September 23, 2005
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ln conclusion, the Federal Circuit’s Nystrom decision further emphasizes that
Plaintiffs "[are] not entitled to a claim construction divorced from the context of the written
description and prosecution history.” 2005 WL 2218632 at *7. When read in conjunction with
the ‘737 patent’s written description and prosecution history, Barr’s is the only construction "that
stays true to the claim language and most naturally aligns with the patent’s description of the
invention.” See id. at *4.
Respectfully submitted, _
JW Izc g
Enclosure
cc: Clerk ofthe Court (by CM/ECF and hand delivery)
Frederick L. Cottrell, III, Esquire (by e—mail)
David B. Bassett, Esquire (by e—mail)
George C. Lombardi, Esquire (by e-mail)
Bradley C. Graveline, Esquire (by e-mail)
DB0l:l85889l.l 06z9a7.1001