Opinion
05 Civ. 1321 (WHP).
January 17, 2007
Raymond N. Nimrod, Esq., Jenner Block LLP, One IBM Plaza, Chicago, IL, Counsel for Plaintiffs.
Steven L. Underwood, Esq., James A. Mitchell, Esq., Price, Heneveld, Cooper, DeWitt Litton, LLP, Grand Rapids, MI, Counsel for Defendants.
ORDER
On December 2, 2005, Defendants moved for summary judgment contending that ANDA No. 77-355 (the "ANDA") does not infringe on U.S. Patent No. 5,817,340 (the "`340 patent") and requesting invalidation of the `340 patent on obviousness grounds. On July 27, 2006, this Court issued a Memorandum and Order (the "July 27 Order") construing the `340 patent's claims, awarding summary judgment to Plaintiffs on the issue of infringement and denying Defendants' motion for summary judgment on invalidity.McNeil-PPC, Inc. v. Perrigo Co., 443 F. Supp. 2d 492 (S.D.N.Y. 2006). Defendants seek reconsideration of the Court's decision to grant summary judgment to Plaintiffs on the issue of infringement. Defendants also request that this Court withdraw and reserve its Markman determination pending trial. For the reasons set forth below, Defendants' motion is granted in part and denied in part.
I. Reconsideration Standard
A motion for reconsideration under Local Rule 6.3 "will generally be denied unless the moving party can point to controlling decisions or data that the court overlooked — matters, in other words, that might reasonably be expected to alter the conclusion reached by the court." Shrader v. CSX Transp., Inc., 70 F.3d 255, 257 (2d Cir. 1995); see also Banco Central de Para. v. Para. Humanitarian Found., Inc., No. 01 Civ. 9649 (JFK), 2005 WL 1561504, at *1 (S.D.N.Y. June 30, 2005);Colodney v. Continuum Health Partners, Inc., No. 03 Civ. 7276 (DLC), 2004 WL 1857568, at *1 (S.D.N.Y. Aug. 18, 2004). Such a motion "cannot assert new arguments or claims which were not before the court on the original motion." Koehler v. Bank of Berm. Ltd., No. M18-302 (CSH), 2005 WL 1119371, at *1 (S.D.N.Y. May 10, 2005); accord Am. Hotel Int'l Group v. OneBeacon Ins. Co., No. 01 Civ. 0654 (RCC), 2005 WL 1176122, at *1 (S.D.N.Y. May 18, 2005); Pannonia Farms, Inc. v. USA Cable, No. 03 Civ. 7841 (NRB), 2004 WL 1794504, at *3 (S.D.N.Y. Aug. 10, 2004) (reconsideration "is not occasion for a party to craft new and previously untested legal theories"). Indeed, reconsideration is not an invitation for parties to "treat the court's initial decision as the opening of a dialogue in which that party may then use such a motion to advance new theories or adduce new evidence in response to the court's rulings." De Los Santos v. Fingerson, No. 97 Civ. 3972 (MBM), 1998 WL 788781, at *1 (S.D.N.Y. Nov. 12, 1998); accord In re Rezulin Prods. Liab. Litig., 224 F.R.D. 346, 349 (S.D.N.Y. 2004). The standard for granting a motion for reconsideration is strict and the decision on such a motion is "within the sound discretion of the district court." Colodney, 2004 WL 1857568, at *1.
II. Summary Judgment
The July 27 Order held that the `340 patent reads directly on the ANDA and that Perrigo infringed the `340 patent. McNeil, 443 F. Supp. 2d at 512. Although Plaintiffs did not move for summary judgment on infringement, Defendants' counsel stated at oral argument that "I don't believe there is any . . . disputed fact about how Perrigo's tablet is constructed." (Transcript of Proceedings, dated Apr. 25, 2006, at 118.) Accepting counsel's statement at face value, the Court determined that no issues of fact remained for trial after the Court had construed the `340 patent's claims in favor of Plaintiffs.
Defendants now construe their assertion at oral argument to mean that there are no issues of fact regarding Perrigo's tablet, but only insofar as this Court agrees with Perrigo's claim interpretation. To the extent the Court disagrees with Defendants' proposed claim construction, Perrigo contends, there are genuine issues of material fact that must be resolved at trial. Once again this Court accepts Defendants' contention at face value.
The Court is required to "give clear and express notice before granting summary judgment sua sponte, even against parties who have themselves moved for summary judgment." Bridgeway Corp. v. Citibank, 201 F.3d 134, 139 (2d Cir. 2000). Affording Defendants every benefit of the doubt, and despite their earlier assertion at oral argument, this Court withdraws its summary judgment determination on the issue of infringement in light of Defendants' current contention that they lacked proper notice. Although the parties briefly addressed the remaining purported factual disputes in their submissions on this motion, the Court will, out of an abundance of caution, receive evidence on this subject at trial. See Ramsey v. Coughlin, 94 F.3d 71, 73-74 (2d Cir. 1996) (holding that "care should . . . be taken by the district court to determine that the party against whom summary judgment is rendered has had a full and fair opportunity to meet the proposition that there is no genuine issue of material fact . . .")
III. Claim Construction
Defendants request that the Court withdraw its Markman ruling to take into account Defendants' expert testimony on claim interpretation. Yet none of the expert evidence presented on this motion was identified to the Court when the July 27 Order was issued. A motion for reconsideration may not be used "to advance new facts, issues or arguments not previously presented to the court." Bank Leumi Trust Co. of New York v. Istim, Inc., 902 F. Supp. 46, 48 (S.D.N.Y. 1995). Because Defendants cannot point to any evidence that this Court "overlooked" in the July 27 Order, the motion to withdraw this Court's Markman ruling is denied. See Shrader, 70 F.3d at 257; Harris v. Wu-Tang Productions, Inc., No. 05 Civ. 3157 (WHP), 2006 WL 1677127, at *2-4 (S.D.N.Y. June 16, 2006); Valentine v. Metro. Life Ins. Co., No. 85 Civ. 3006 (CSH), 2005 WL 1278524, at *2 (S.D.N.Y. May 31, 2005).
Defendants urge this Court to revisit the Markman ruling pursuant to the principle of "rolling claim construction." See Oakley, Inc. v. Sunglass Hut Int'l, 316 F.3d 1331, 1345 n. 3 (Fed. Cir. 2003); Guttman v. Kopykake Enters., Inc., 302 F.3d 1352, 1361 (Fed. Cir. 2002). However, rolling claim construction is most often applied when the Court issues "tentative" constructions when "faced with construing highly technical claim language on an expedited basis," such as on a preliminary injunction motion. Oakley, 316 F.3d at 1345 n. 3 (quotingGuttman, 302 F.3d at 1361-62); see also Sofamor Danek Group, Inc. v. DePuy-Motech, Inc., 74 F.3d 1216, 1221 (Fed. Cir. 1996). Here, the Court construed the claims after a protracted briefing schedule and a day-long hearing. As one court has noted:
Where there is, as here, an extensive record with a procedure embodying the formality for the claim construction proceedings, it is appropriate to view the standard of review to be used in considering a motion for reconsideration in a stricter manner in consideration of the interests of judicial economy. Having devoted several days to hearings and after reviewing an extensive record, the court issued its opinion on claim construction. This court will, therefore, examine the motion in light of the record and traditional standards of review for motions for reconsideration.Manders v. McGhan Med. Corp. No. 02 Civ. 1341, 2006 WL 2372136, at *2 (W.D. Pa. Aug. 15, 2006). Moreover, Defendants could have presented expert evidence during the Markman proceedings. They chose not to, and offer no principled reason why they deserve a second bite at the apple.
Leaving aside the applicable standard, the expert evidence Defendants now proffer simply repackages arguments previously made by Defendants and rejected by this Court. Regarding the construction of "impermeable" and "impermeably coated famotidine granules," the July 27 Order held that the intrinsic evidence unambiguously permitted some imperfections in the coating of famotidine. The Court therefore rejected Defendants' proposed construction of the terms that would require a coating that "prevents any contact or interaction between any of the famotidine and any of the antacid." McNeil, 443 F.2d at 510. Defendants have identified nothing that contradicts the unambiguous intrinsic evidence. Extrinsic evidence such as Defendants' proposed expert testimony may not be relied on during claim construction when the intrinsic evidence unambiguously defines the disputed claim language. See Bell Howell Document Mgmt. Prods. Co. v. Altek Sys., 132 F.3d 701, 706 (Fed. Cir. 1997).
Defendants' purported expert, Metin Celik, offers conclusory testimony about the coating required by the `340 patent's claims. (See Rebuttal Report of Dr. Metin Celik ("Celik Rebuttal") at 9-10). Celik identifies no method that is capable of applying a perfect coating to the famotidine granules. Celik does not even attempt to reconcile the absence of such evidence with the requirement that claims be construed in a way that one of ordinary skill in the art understands them. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) ("[T]he inquiry into how a person of ordinary skill in the art understands a claim term provides an objective baseline from which to begin claim interpretation."); Markman v. Westview Instrs., Inc., 52 F.3d 967, 986 (Fed. Cir. 1995) (In construing claims the courts focus on "what one of ordinary skill in the art at the time of the invention would have understood the term to mean."). Accordingly, the construction of "impermeable" and "impermeably coated famotidine granules" adopted by this Court in the July 27 Order will not be altered.
Defendants' arguments regarding the terms "mix" and "mixing" are no more persuasive. Defendants ask this Court to ignore Example II of the `340 patent, as they did during the Markman proceedings. For the reasons discussed in the July 27 Order, this Court declines to discount one of the `340 patent's preferred embodiments. See McNeil, 443 F. Supp. 2d at 504. The proposed testimony of Celik adds nothing of value to the analysis. First, Celik offers additional definitions in support of Defendants' proposed claim construction. (Celik Rebuttal at 2-4.) This Court has already found that the "conflicting dictionary definitions do not aid this Court's construction of the claims." McNeil, 443 F. Supp. 2d at 507. With Celik's most recent contributions, the dictionary definitions still conflict, and do not illumine the record. Beyond introducing these new definitions, Celik offers conclusory testimony that fails to address the claim construction analysis in the July 27 Order. (Celik Rebuttal at 5-8.)
Defendants have identified no evidence to contradict this Court's Markman ruling. Since discovery closed before briefing of Defendants' motion was concluded, Defendants had every opportunity to present such evidence. Permitting further litigation on the issue of claim construction would be futile.
CONCLUSION
For the foregoing reasons, Defendants' motion for reconsideration is granted with respect to summary judgment on the issue of infringement entered in favor of Plaintiffs in the July 27 Order. Defendants' motion to withdraw the Court's Markman decision is denied.
SO ORDERED.