Judge Sleet denies 12(b)(6) motion finding that the Court's prior construction of claims of the patent-in-suit did not result in issue preclusion
Chief Judge Gregory M. Sleet recently considered defendants' motion to dismiss in which the defendants argued that in light of the Court's prior construction of certain claims of the patent-in-suit, defendants' ANDA product could not infringe. Endo Pharms. Inc. v. TWI Pharms., Inc., C.A. No. 12-848-GMS (D. Del. Feb. 11, 2013). Judge Sleet denied the motion determining that, at this early stage of the case, the court could not find plaintiffs' claims "without merit or facially implausible." Id. at 2 n.1. Citing Third Circuit precedent on the issue of collateral estoppel, Judge Sleet noted that it was not clear that the Court would be bound by the prior claim construction when the parties reached a settlement before the court issued a decision. Id. at 2 n.1 (citing Russo v. City of Phila., 459 F. App'x 176, 178-79 (3d Cir. 2012) (outling the four elements of issue preclusion)). The court also determined that even if the court adopted its prior claim construction ruling, "the ANDA product could infringe the [patent-in-suit] under the doctrine of equivalents]; and because the claim limitation at issue was preceed by "consisting essentional of," the possibility existed that the ANDA product "could contain more than one of the Markush group members." Id.