Intellectual Property Law

Jerome B. Simandle: Claim Construction Inappropriate on Motion to Dismiss

By Karen E. Keller, Andrew A. Lundgren et al.

Visiting district judge Jerome B. Simandle issued a decision Monday that refused to construe a set of claims for purposes of resolving a motion to dismiss. By their motion, Defendant Trigen and another claimed that, based on the motion's record, their ear-drop solution could not infringe the patents-in-suit as a matter of law.

Recognizing that other jurisdictions have declined to engage in claim construction to resolve a preliminary motion, the Court rejected Trigen's attempts to evade the case law:

"Defendants attempt to distinguish these cases on the grounds that many involved efforts to introduce extrinsic evidence on a Rule 12(b)(6) motion, noting that here no party has offered extrinsic evidence nor documentation of prosecution history. This only serves to illustrate the point. The fact that the parties in this case have obeyed the procedural rules constraining Rule 12(b)(6) motions does not mean that the record is sufficiently complete to warrant construing the patent claim contrary to Plaintiffs' allegations of infringement."

The Court summed it up best by advising that it is possible to "envision a patent infringement cause of action for which patent claims could be construed on a motion to dismiss, but this is not such a case."

Deston Therapeutics LLC v. Trigen Labs. Inc., C.A. No. 09-809-JBS-KW (D. Del. July 12, 2010) (Simandle, J.).

Full post as published by Delaware IP Law Blog on July 14, 2010 (boomark / email).