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Judge Forrest: “Regeneron's position that each claim in its ‘018 Patent has a single limitation is, at the very least, odd. It is also possibly a colossal tactical blunder.

Regeneron Pharmaceuticals, Inc. v. Ablexis LLC

Case Number: 1:14-v-01651-KBF

Teaser: Judge Forrest: “Regeneron's position that each claim in its ‘018 Patent has a single limitation is, at the very least, odd. It is also possibly a colossal tactical blunder.”

Regeneron moved to amend its infringement contentions, first to assert infringement under the doctrine of equivalents and second to add additional detail describing infringement. Its position that each asserted claim has only one element, as demonstrated by its infringement contentions, is, in the court’s eyes, problematic.

Claim 1 of U.S. Patent No. 8,502,018 reads “A genetically modified mouse, comprising in its germline human unrearranged variable region gene segments inserted at an endogenous mouse immunoglobulin locus.” The court had previously considered Regeneron’s position, and ordered:

The Court will not force Regeneron to delineate elements in any particular way - but it will hold it to its stated position; here its position is that each claim has a single element and no delineation is necessary.

 

Breaking a claim with more than one limitation into its constituent elements is precisely what experienced practitioners in this area understand is required by infringement contentions. There are certainly claims with only one limitation; and there are certainly those with more. Here, Regeneron asserts one limitation per claim. If it is incorrect, this position has potential real ramifications for, inter alia, determinations of word surplusage, claim differentiation, and definiteness. The Court assumes Regeneron understands the implications of its position. The Court will not allow Regeneron to later claim individual elements or limitations.


Now, turning to amending the contentions to assert infringement under the doctrine of equivalents, the court denied the motion. It cited Warner-Jenkinson v. Hilton Davis Chemical  for the proposition that the “determination of equivalence should be applied as an objective inquiry on an element-by-element basis.” Then, the court said “[i]n the absence of a particularized position taken by the plaintiff on the constituent elements of his patent, there is simply no way to assess equivalency.” Accordingly, the court denied the motion to amend with respect to the doctrine of equivalents.

The court said that Regeneron could make a single amendment to its contentions providing additional technical detail.


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