`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`CELGENE CORPORATION AND
`CELGENE INTERNATIONAL SÀRL,
`
`Plaintiffs,
`
`v.
`
`ACCORD HEALTHCARE INC.,
`
`Defendant.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Civil Action No. 21-cv-1795-RGA
`
`JOINT CLAIM CONSTRUCTION CHART
`
`Pursuant to Paragraph 7 of the Scheduling Order (D.I. 13), Plaintiffs Celgene Corporation
`
`and Celgene International Sàrl (collectively, “Plaintiffs”) and Accord Healthcare Inc.
`
`(“Defendant”) hereby file this Joint Claim Construction Chart for U.S. Patent Number 8,846,628
`
`(the “’628 patent”). The agreed-upon claim construction is attached as Exhibit A, and the disputed
`
`claim construction is attached as Exhibit B. The ’628 patent is attached as Exhibit C. The excerpts
`
`from the prosecution histories cited herein are attached as Exhibit D. In addition to the disputed
`
`terms listed below, Defendant contends that several terms of the ’628 patent are indefinite;
`
`Plaintiffs disagree with Defendant’s contention, but the parties are in agreement that indefiniteness
`
`in this case is best addressed at trial, after the Court has had the benefit of the presentation of expert
`
`testimony.
`
`- 1 -
`
`CELGENE 2045
`APOTEX v. CELGENE
`IPR2023-00512
`
`
`
`Case 1:21-cv-01795-RGA Document 35 Filed 11/07/22 Page 2 of 2 PageID #: 253
`
`
`
`Dated: November 7, 2022
`
`Respectfully submitted,
`
`FARNAN LLP
`
`STAMOULIS & WEINBLATT LLC
`
`
`
`/s/ Brian E. Farnan
`Joseph J. Farnan, Jr. (Bar No. 100245)
`Brian E. Farnan (Bar No. 4089)
`Michael J. Farnan (Bar No. 5165)
`919 N. Market Str., 12th Floor
`Wilmington, DE 19801
`Tel: (302) 777-0300
`Fax: (302) 777-0301
`farnan@farnanlaw.com
`bfarnan@farnanlaw.com
`mfarnan@farnanlaw.com
`
`Counsel for Plaintiffs Celgene Corporation
`and Celgene International Sàrl
`
`
`
`/s/ Stamatios Stamoulis
`Stamatios Stamoulis (#4606)
`800 N. West Street Third Floor
`Wilmington, DE 19801
`Telephone: (302) 999-1540
`Facsimile: (302) 762-1688
`stamoulis@swdelaw.com
`
`Counsel for Defendant Accord Healthcare Inc.
`
`- 2 -
`
`
`
`- 1 -
`
`recited parameter”
`pharmaceutical composition in connection with a test of the
`“a human or other animal who received the recited
`
`(’628 Patent, claims 11, 18, 20-22, 38, 40, 42, and 43)
`
`“test subject”
`
`Agreed-Upon Construction
`
`Claim Term
`
`EXHIBIT A – AGREED-UPON CONSTRUCTIONS
`
`Case 1:21-cv-01795-RGA Document 35-1 Filed 11/07/22 Page 1 of 1 PageID #: 254
`
`
`
`
`
`
`
`- 2 -
`
`Action at p. 7-9
`Aug. 29, 2013 Office
`Prosecution History,
`’628 Patent
`
`at 12-15
`and Amendment at pp.
`Aug. 3, 2012 Response
`Prosecution History,
`’628 Patent
`
`Action at p. 9
`Feb. 28, 2012 Office
`Prosecution History,
`’628 Patent
`
`at 5, 8, 19-24
`and Amendment at pp.
`Dec. 1, 2011 Response
`Prosecution History,
`’628 Patent
`
`Action at p. 6
`Aug. 1, 2011 Office
`Prosecution History,
`’628 Patent
`
`Defendant’s Intrinsic
`
`8:5; 11:42-62
`’628 Patent at 5:49-
`
`Evidence
`
`Defendant’s Proposed
`
`stomach”; indefinite
`released in the
`cytidine analog) to be
`ingredient (i.e.,
`10% of the active
`allows at least about
`comprise a coating that
`“tablet that does not
`Construction
`
`8, 11-12, 15-17
`Amendment at pp. 2, 4,
`Response and
`Feb. 27, 2014
`Prosecution History,
`’628 Patent
`
`11:42-45
`’628 Patent at 5:52-55;
`
`Plaintiffs’ Intrinsic
`
`Evidence
`
`
`
`7, 10
`Declaration at pp. 4, 6-
`C.F.R. 1.132
`Feb. 27, 2014 37
`Prosecution History,
`’628 Patent
`
`Apr. 6, 2017 37 C.F.R.
`Prosecution History,
`14/788,606
`U.S. Pat. App. No.
`
`
`
`2, 6, 7-8
`and Amendment at pp.
`Apr. 6, 2017 Response
`Prosecution History,
`14/788,606
`U.S. Pat. App. No.
`
`
`
`beyond the stomach”
`active ingredient(s)
`intended to release the
`comprise a coating
`“tablet that does not
`Construction
`
`Plaintiffs’ Proposed
`
`42, and 43)
`24, 28, 32-35, 38, 40,
`2, 6-8, 11, 13-18, 20-
`(’628 Patent claims 1,
`
`tablet”
`“non-enteric coated
`
`Claim Term
`
`EXHIBIT B – DISPUTED CONSTRUCTIONS
`
`Case 1:21-cv-01795-RGA Document 35-2 Filed 11/07/22 Page 1 of 2 PageID #: 255
`
`
`
`
`
`at pp. 1-4
`Notice of Allowability
`
`pp. 1-10
`Beach Declaration at
`
`11-23
`Amendment at pp. at
`Response and
`Feb. 27, 2014
`Prosecution History,
`’628 Patent
`
`Defendant’s Intrinsic
`
`Evidence
`
`
`
`- 3 -
`
`Defendant’s Proposed
`
`Construction
`
`Plaintiffs’ Intrinsic
`
`Evidence
`
`pp. 4, 6-7, 10
`1.132 Declaration at
`
`Plaintiffs’ Proposed
`
`Construction
`
`Claim Term
`
`
`
`
`
`Case 1:21-cv-01795-RGA Document 35-2 Filed 11/07/22 Page 2 of 2 PageID #: 256
`
`
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