Chief Judge Leonard P. Stark recently considered plaintiffs’ request to supplement the joint claim chart in Meda Pharmaceuticals Inc. v. Teva Pharmaceuticals USA, Inc., No. 15-785-LPS (D. Del. Dec.7, 2016), to include exhibits from the prosecution history of the patent-in-suit. Plaintiffs submitted the additional exhibits for inclusion in the chart, and consideration by the Court, just days before the Markman hearing. Shortly before the request, the Court denied plaintiffs’ motion to amend its complaint to assert the Certificate of Correction in this case, which, if allowed, “would have obviated the need to construe claims 28-30 of the ‘428 patent[.]” Id. at 1. The additional exhibits to the joint claim chart included “a listing of claims before allowance” and “a request for expedited issuance of a Certificate of Correction.” Id. Defendants opposed the additional exhibits arguing that plaintiffs effectively were seeking to reargue the Court’s denial of the motion to amend, and characterized the Court’s decision on that motion “as holding ‘that the Certificate of Correction is inapplicable and that the Court will construe the uncorrected patent using the existing claim construction briefs as they were submitted.'” Id. at 2. Judge Stark disagreed:
The order denied Plaintiffs’ motion for leave to amend the complaint to assert the Certificate of Correction, which would have resolved the parties’ dispute regarding the proper construction of claims 28-30 of the ‘428 patent. The Court’s denial of Plaintiffs’ motion left claims 28-30 in their uncorrected form and needing construction. The Court did not reach any decision regarding what evidence would be considered when construing the claims.
Although plaintiffs should have submitted the prosecution-history evidence during claim construction briefing, this delay did not “change the fact that the exhibits are part of the prosecution history.” Id. at 3. Therefore, Judge Stark determined that the best course would be for the Court to construe the claims with the benefit of the full prosecution history, but to allow defendant to provide a supplemental brief to address this new evidence. Id.