Case: 1:16-cv-00651 Document #: 63 Filed: 12/06/16 Page 1 of 5 PageID #:2354
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`
`
`HOSPIRA, INC.,
`
`
`Plaintiff,
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`
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`
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`
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`C.A. No. 1:16-cv-00651
`
`Honorable Rebecca Pallmeyer
`
`
`
`v.
`
`FRESENIUS KABI USA, LLC
`
`
`Defendants.
`
`
`
`
`JOINT CLAIM CONSTRUCTION CHART
`
`Pursuant to Local Patent Rule 4.2(f), the Plaintiff Hospira, Inc. (“Hospira”) and
`
`Defendant Fresenius Kabi USA, LLC (“Defendant”) have provided herein their respective
`
`constructions for the disputed terms of U.S. Patent Nos. 8,242,158 (“the ‘158 patent”); 8,338,470
`
`(“the ‘470 patent”); 8,455,527 (“the ‘527 patent”); and 8,648,106 (“the ‘106 patent”) (collectively,
`
`the “patents-in-suit”) in the form of a joint claim construction chart.
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`Additionally, pursuant to Local Patent Rule 4.2(f), the parties propose that the claim
`
`construction hearing be limited to attorney argument with each side having ninety (90) minutes to
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`present its claim construction arguments. The parties propose, subject to the Court’s preference
`
`on how to hear argument on claim construction, proceeding term-by-term, with each party
`
`presenting all arguments for a term before moving to the next term. Subject to the Court’s
`
`preference, the terms will be argued in the order that they are presented in the chart below. The
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`parties do not believe that fact or expert testimony is necessary for the claim construction hearing,
`
`unless the Court believes such testimony would be helpful.
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`
`
`HOSPIRA, INC.,
`
`
`Plaintiff,
`
`
`
`
`
`
`
`
`
`
`
`
`
`C.A. No. 1:16-cv-00651
`
`Honorable Rebecca Pallmeyer
`
`
`
`v.
`
`FRESENIUS KABI USA, LLC
`
`
`Defendants.
`
`
`
`
`JOINT CLAIM CONSTRUCTION CHART
`
`Pursuant to Local Patent Rule 4.2(f), the Plaintiff Hospira, Inc. (“Hospira”) and
`
`Defendant Fresenius Kabi USA, LLC (“Defendant”) have provided herein their respective
`
`constructions for the disputed terms of U.S. Patent Nos. 8,242,158 (“the ‘158 patent”); 8,338,470
`
`(“the ‘470 patent”); 8,455,527 (“the ‘527 patent”); and 8,648,106 (“the ‘106 patent”) (collectively,
`
`the “patents-in-suit”) in the form of a joint claim construction chart.
`
`Additionally, pursuant to Local Patent Rule 4.2(f), the parties propose that the claim
`
`construction hearing be limited to attorney argument with each side having ninety (90) minutes to
`
`present its claim construction arguments. The parties propose, subject to the Court’s preference
`
`on how to hear argument on claim construction, proceeding term-by-term, with each party
`
`presenting all arguments for a term before moving to the next term. Subject to the Court’s
`
`preference, the terms will be argued in the order that they are presented in the chart below. The
`
`parties do not believe that fact or expert testimony is necessary for the claim construction hearing,
`
`unless the Court believes such testimony would be helpful.
`
`
`
`Case: 1:16-cv-00651 Document #: 63 Filed: 12/06/16 Page 2 of 5 PageID #:2355
`
`Order of Presentation
`
`The parties disagree regarding the appropriate order and manner of presentation.
`
`Plaintiff’s Position:
`
`As the patentee, Hospira should go first in presenting argument on its own patents. At trial,
`
`the patentee typically proceeds with its case first. This approach should apply here, where briefing
`
`is complete and both parties have provided their positions. Therefore, Hospira requests that it be
`
`allowed to make its arguments first, followed by the Defendant’s response, and then any rebuttal
`
`arguments by each party (if necessary).
`
`Defendant’s Position:
`
`Local Patent Rule 4.2 and the Comment thereto require the alleged infringer to brief claim
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`construction issues prior to the patentee “to promote a meaningful exchange regarding the
`
`contested points.” This goal is best served by hearing the parties’ arguments in the order of the
`
`briefing as dictated by the Local Patent Rules with Defendant presenting all terms (with
`
`opportunity to reserve time for rebuttal) followed by Plaintiff’s response and Defendant’s rebuttal
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`(if necessary).
`
`What is customary in other cases and other Districts is not what the Local Patent Rules
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`provide here, and for good reason. In this District, the defendant is asked to brief and present first
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`because it is treated as the moving party raising issues with the scope of the claims as part of the
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`patent challenge. As such, Defendant requests the parties follow the Local Patent Rules and
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`Defendant present its argument first for each term.
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`2
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`Case: 1:16-cv-00651 Document #: 63 Filed: 12/06/16 Page 3 of 5 PageID #:2356
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`Patent / Claim(s)
`
`Patents-in-suit, all
`asserted claims
`
`Patents-in-suit, all
`asserted claims
`
`“sealed glass
`container”
`
`’527 Patent, Claim 8 “intensive care unit”
`
`Term
`
`“ready to use”
`
`JOINT CLAIM CONSTRUCTION CHART
`
`Hospira
`Construction
`“formulated to be
`suitable for
`administration to a
`patient upon
`manufacture without
`dilution or
`reconstitution
`“glass container
`closed to maintain the
`sterility by having a
`seal or another
`closure that passes
`closure integrity
`testing”
`“any setting that
`provides care to
`critically ill patients,
`typically
`characterized by high
`nurse-to-patient
`ratios, continuous
`medical supervision,
`and intensive
`monitoring”
`
`Fresenius
`Construction
`“suitable for
`administration to a
`patient without
`requiring dilution”
`
`“closed tightly to
`prevent unwanted
`materials entering or
`exiting the glass
`container”
`
`“any setting that
`provides care to
`critically ill patients,”
`or “any setting that
`provides intensive
`care”
`
`In addition, the parties agree on constructions for the following terms:
`
`Patent / Claim(s)
`
`Term
`
`’158 patent, claim 1
`’470 patent, claims 1–4
`’527 patent, claims 1–5
`’106 patent, claims 1–6
`’158 patent, claim 1
`’470 patent, claim 1
`’106 patent, claim 1
`’527 patent, claims 1, 8-10
`
`“dexmedetomidine”
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`“subject”
`
`“patient”
`
`’527 patent, claim 1
`
`“effective amount”
`
`
`
`
`
`Hospira and Fresenius Agreed
`Construction
`“substantially pure, optically active
`dextrorotary stereoisomer of
`medetomidine, as the free base or
`pharmaceutically acceptable salt”
`“a human, a non-human mammal or a
`non-human animal”
`
`“a human, a non-human mammal or a
`non-human animal”
`“amount sufficient to produce the desired
`effect”
`
`3
`
`
`
`Bradford P. Lyerla
`
`
`
`HOSPIRA, INC.
`
`By: /s/
`
`Bradford P. Lyerla
`Sara T. Horton
`Yusuf Esat
`Chad J. Ray
`JENNER & BLOCK LLP
`353 N. Clark Street
`Chicago, IL 60654-3456
`Telephone: 312 222-9350
`Facsimile: 312 527-0484
`blyerla@jenner.com
`shorton@jenner.com
`yesat@jenner.com
`cray@jenner.com
`
`Attorneys for Plaintiff Hospira, Inc.
`
`
`
`Joel M. Wallace
`
`Respectfully Submitted,
`
`FRESENIUS KABI USA, LLC
`
`By: /s/
`
`Imron T. Aly
`Joel M. Wallace
`Tara L. Feld
`SCHIFF HARDIN LLP
`233 South Wacker Drive
`Suite 6600
`Chicago, IL 60606
`(312) 258-5500
`ialy@schiffhardin.com
`jwallace@schiffhardin.com
`tfeld@schiffhardin.com
`
`Ahmed M.T. Riaz (pro hac vice)
`666 Fifth Avenue, 17th Floor
`New York, NY 10103
`(212) 753-5000
`
`Attorneys for Defendant/Counterclaimant
`Fresenius Kabi USA, LLC
`
`
`
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`Case: 1:16-cv-00651 Document #: 63 Filed: 12/06/16 Page 4 of 5 PageID #:2357
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`Dated: December 6, 2016
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`4
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`Case: 1:16-cv-00651 Document #: 63 Filed: 12/06/16 Page 5 of 5 PageID #:2358
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`CERTIFICATE OF SERVICE
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`I , Yusuf Esat, an attorney at the law firm of Jenner & Block LLP, certify that on
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`December 6, 2016 the foregoing JOINT CLAIM CONSTRUCTION CHART was electronically
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`served on counsel of record via email.
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`__/s/ Yusuf Esat_________________
` Yusuf Esat
`
`
`5
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