`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF DELAWARE
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`NOV ARTIS PHARMACEUTICALS
`CORPORATION, et al.,
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`Plaintiffs,
`
`V.
`
`BRECKENRIDGE
`PHARMACEUTICAL, INC., et al.,
`
`Defendants.
`
`Civil Action No. 16-431-RGA
`Consolidated
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`MARKMAN ORDER
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`The parties dispute the claim construction of "solid mixture," which occurs in the first
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`independent claims of asserted U.S. Patent Nos. 7,297,703 and 7,741,338. As it happens, I have
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`construed the very term in the very same patents in a prior case brought by the very same
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`Plaintiffs, albeit against a different defendant. See Novartis v. Par, 2015 WL 7566615 (D. Del.
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`Nov. 23, 2015). I have reread my opinion in the earlier case, and have considered Novartis's
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`arguments in the joint claim construction brief. (D.I. 76). Defendants argue that Novartis is
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`collaterally estopped, and, in any event, the claim construction is correct. Novartis says collateral
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`estoppel does not apply because Novartis did not have a "full and fair opportunity to litigate" it in
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`the earlier proceeding, and there was no final judgment for which the construction was essential.
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`On the second part of this argument, Defendants concede that the law is "unsettled" on the final
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`judgment requirement. (Id. at 25). Defendants argue, and I agree, that the "full and fair
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`opportunity to litigate" is not persuasive. Indeed, I am surprised that Novartis makes the
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`argument. Novartis was able to submit two briefs on the issue (No. 14-1494, D.I. 89) and be
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`
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`Case 1:16-cv-00431-RGA Document 79 Filed 04/25/18 Page 2 of 2 PageID #: 779
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`heard at oral argument eleven days after the joint claim construction brief was filed, where "solid
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`mixture" was the only term being argued. (Id., D.I. 95). Could the schedule have been more
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`leisurely? Yes. But there was plenty of time for Novartis (which does not lack for capable
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`lawyers) to fully and fairly present its arguments. Thus, as far as I am concerned, the only issue
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`on "collateral estoppel" is the final judgment issue. I think that is a question oflaw which, under
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`the circumstances, I do not need to decide.
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`I think my prior claim construction is correct. There is no negative limitation that a "solid
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`mixture" "is not a pharmaceutical composition." (D.I. 76 at 1). The main point of my earlier
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`opinion is that an independent claim which excludes pharmaceutical compositions cannot have a
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`dependent claim that requires a pharmaceutical composition. A substance that infringes a
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`dependent claim must also infringe the independent claim from which it depends. Thus, if an
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`independent claim excludes pharmaceutical compositions, a dependent claim must also exclude
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`pharmaceutical compositions. I am not persuaded by Novartis's argument (see D.I. 76 at 16-20)
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`to the contrary. Novartis's proposed construction is rejected. Defendants' proposed
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`construction, to which Novartis does not otherwise object (see id. at 2 n.4), is adopted.
`IT IS SO ORDERED this~ day of April 2018.
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`
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