Judge Jones Accepts Claim Interpretation "Proffer" on Motion for Summary Judgment

Judge Jones is one of our district's newest federal judges. In a recent order in Unigen Pharmaceuticals Inc. v. Walgreen Company (07-047-RAJ), he offers some new ideas for dealing with early summary judgment motions in a patent case, i.e., summary judgment motions filed before any substantive claim construction briefing. This dispute involves U.S. Patent No. 7,192,611, a patent for the "Identification of Free-B-Ring Flavanoids as Potent Cox-2 Inhibitors."

Walgreens alleges that the patent is invalid in view of United States Patent No. 5,650,433 and they filed a summary judgment motion asking the judge to dispense with complex claim interpretation and invalidate the patent under section 102(b). After noting that "determining the validity of a patent before construing its claims is improper" (citing Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc., Inc., 344 F.3d 1186, 1195 n.4 (Fed Cir. 2003)), Judge Jones stated that "the apparent similarity between the ‘433 Patent and the patent-in-suit suggests that the court may more efficiently resolve this dispute by considering Walgreen’s motion in advance of formal claim construction." To this end, Judge Jones ordered plaintiff "to submit, within two weeks of this order, a proposed claim construction for each of the asserted claims of the patent-in-suit. Unigen should not offer argument in favor [of] its proposed claim construction, but should ensure that it submits sufficient explanation to permit the court to understand its proposed claim construction. Unigen will not be bound by its proposed claim construction except in the court’s consideration of the motions before it. Unigen may advance a different interpretation of its claims during the formal claim construction in this litigation. The
only requirement the court places upon the claim construction that Unigen submits in response to this order is that it be in good faith, consistent with the requirements of Fed. R. Civ. P. 11. The purpose of this order is to permit Unigen to propose a favorable, good-faith claim construction to avoid any prejudice that might otherwise arise from considering an invalidity motion in advance of formal claim construction."

Essentially, the order asks for a "proffer" from plaintiff concerning a "favorable, good-faith claim construction." Presumably, if Plaintiffs can offer a construction in good faith that avoids anticipation, Judge Jones will deny the motion.

Unigen asked for reconsideration of this order, arguing that the court should just delay consideration of Walgreen's motion until such time that it has an opportunity to construe the claims. Judge Jones denied this motion, stating "The court’s admonition that Plaintiff should not offer argument in support of its proposed claim construction is not a limitation on Plaintiff’s ability to advance its cause. Plaintiff should not offer argument in support of its proposed claim instruction because the court will accept Plaintiff’s proposed claim construction for purposes of resolving the summary judgment motion, and thus argument is not necessary. As stated in the prior order, the court encourages Plaintiff to provide an explanation of its proposed claim construction that will permit the court to apply that claim construction in resolving the summary judgment motion. That explanation should be sufficient to permit the court to consider the patent-in-suit through the eyes of a person of ordinary skill in the art."

This new approach to resolving early summary judgment motions raises some interesting issues. If plaintiff is unable to proffer a construction in good faith that avoids anticipation, is it proper then to dismiss its claims without formal claim construction, a result that seems to conflict with the Federal Circuit's rule in Akamai Techs., 344 F.3d at 1195 n.4? Further, what credit does this process provide to the rule that claims construction is (at least for the moment) a question of law for the Court, subject to de novo review? Is it ever proper procedure for the court to dispense with formal claim construction in order to resolve a properly filed motion for summary judgment in patent case? All open questions.

JudgeJonesORderRenotingMotionSJ.pdf

JudgeJonesMreconsider.pdf

Judge%20JonesSJ.pdf