Judge Stark recently issued a Markman opinion in Bristol-Myers Squibb Co. v. Mylan Pharmaceuticals Inc., C.A. No. 09-651-LPS (D. Del. May 16, 2012). The Court construed the following claim terms of patents related to the reverse transcriptase inhibitor, Efavirenz:
- “Form 1,” “Form 2,” and “Form 4”
- “Form I,” “Form II,” and “Form III”
- “Characterized by”
- “Comprising 4 (or 6) or more 2θ values selected from the group consisting of”
- “Characterized by a differential scanning calorimetry thermogram having a peak at about 108° C to about 110° C”
- “Form 5”
- “No detectable peaks”
Judge Stark noted that “the parties’ respective positions [on several disputed terms] reveal underlying factual disputes that should be resolved at trial rather than as part of claim construction.” While construing the terms in question, he found that there were several “matters on which the Court will need to receive testimony. Therefore, the Court will reserve judgment on these questions and the ultimate indefiniteness determination for trial.” Id. at 14. Judge Stark also refused to consider Plaintiff’s attempted modification after the Markman hearing of “their originally proposed construction to conform with the Court’s previous constructions of similar ‘Form’ terms in a separate case involving different patents. . . . In view of Defendants’ objections, as well as Plaintiffs’ representations that their proposal ‘does not change the claim scope’ the Court will not consider Plaintiffs’ modified proposal.” Id. at 8 n.2.
Bristol-Myers Squibb Co. v. Mylan Pharmaceuticals Inc., C.A. No. 09-651-LPS (D. Del. May 16, 2012).
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