Magistrate Judge Burke has issued a report and recommendation regarding claim construction in a Hatch-Waxman case involving the drug deferasirox, known by the brand name Exjade. The case involves two patents, one of which claims the chemical compound itself and was not the subject of claim construction disputes, and one of which claims methods of using certain compounds and was the subject of claim construction disputes. Novartis Pharms. Corp., et al. v. Actavis, Inc., et al., C.A. No. 12-366-RGA-CJB, Report and Recommendation at 1-2 (D. Del. Nov. 21, 2013). The terms that Judge Burke construed were:
– “iron overload”
Id. at 6-23.
Interestingly, the parties also disputed whether certain claims were independent or dependent claims. The defendants argued that claims 8 and 16 expressly referred to claims 3 and 9, respectively, and were thus clearly dependent. The defendants found further support for the dependency of these claims in the prosecution history, including statements during prosecution that “identical claim language to that at issue was language of dependency.” Id. at 23-28. Plaintiffs took the position that claims 8 and 16 were independent, but had “no real answer for how to square [the] prosecution history with their . . . position that the claims are independent.” Id. at 27. Accordingly, Judge Burke also recommended that claims 8 and 16 be construed as dependent claims. Id. at 28.