We previously reported in February 2014 and June 2014 that New Jersey District Court Judges will enforce the District of New Jersey’s Local Patent Rules’ contention disclosure requirements and bar parties from making arguments that were not properly disclosed in their contentions. Consistent with those rulings, in a recent opinion, in Impax Labs., Inc. v. Actavis Labs FL, Inc., Judge Chesler barred one of Actavis’s infringement arguments made during summary judgment as untimely because the argument was not sufficiently disclosed in its infringement contentions.
In its opposition brief, Impax argued that Actavis raised new non-infringement arguments based on the pharmacokinetic profiles of its proposed generic product. Actavis claimed that its generic product did not meet claim limitations involving a “maximum concentration” limitation or a “40% fluctuation” limitation for two subsets of asserted claims. Upon review of Actavis’s contentions, the court found that Actavis did sufficiently disclose its non-infringement argument in regard to the “maximum concentration” limitation, but that it did not sufficiently disclose its non-infringement argument regarding the “40% fluctuation” limitation.
The court found that Actavis’s non-infringement contentions regarding the “40% fluctuation” limitation stated that “there is no evidence that its products ‘result in a levodopa plasma concentration’ meeting the 40% fluctuation limitation.” Yet, in its summary judgment motion, Actavis expanded that argument by providing a method of calculating the fluctuation that was not in its contentions. To atone for its lack of disclosure, Actavis argued that the prosecution history guided the skilled artisan to use its newly disclosed calculation method. However the court found that “Actavis gave no suggestion that the method of calculating the 40% fluctuation range was at issue, or that it would argue noninfringement based on how the range was computed” in its infringement contentions and barred that particular non-infringement defense.
This is another example of a New Jersey District Court Judge holding a party to a patent matter pending in the District of New Jersey to its contention disclosures. Both plaintiffs and defendants need to be thorough in identifying their claims and defenses in the case and properly disclosing them in their contentions. Further, parties need to be diligent in amending those contentions when additional information is identified through discovery, particularly in jurisdictions with local patent rules such as the District of New Jersey.
Gibbons P.C. will continue to track the applications of local patent rules and their enforcement in limiting issues to be adjudicated.