Eastern District of Texas Court Finds "Close Issue of Claim Construction" Supports JMOL of No Willful Infringement

Centocor Ortho Biotech, Inc. v. Abbott Labs., Case No. 2:07-CV-139-TJW (E.D. Tex. Oct. 1, 2009)

In this case, the defendants ("Abbott") moved for judgment as a matter of law ("JMOL") of no willful infringement after a jury verdict finding Abbott willfully infringed plaintiff's ("Centocor") patent.  Among Abbott's arguments in support of its motion was one of claim construction: "had the Court adopted Abbott's proposed claim constructions the [allegedly infringing product] would necessarily have been outside the scope of the claims."  Centocor countered this argument by stating that "because Abbott never presented [the issue of] claim construction positions before the jury, any arguments on th[is] issue[] cannot be used to overturn the jury's willfulness decision."

Judge Ward found that "the fact that certain facts were not presented to a jury, such as the close issue of claim construction, does not preclude the court to consider them in its determination of, as a matter of law, whether the first prong of Seagate is met … [i]n this case, the issue of claim construction was close and Abbott's proposed interpretation for the claims, although eventually not adopted, was reasonable and based upon the specification and prosecution history of the [patent-in-suit].  Thus, the Court takes the close issues of claim construction into consideration in its determination of whether Abbotts' actions were 'objectively reckless.'"  Judge Ward ultimately granted Abbott's motion for JMOL on the issue of willfulness, based at least in part on the close issue of claim construction.

Thanks go out to the Docket Report blog for its initial reporting of this case. 

If you have a comment or would like to see a particular topic discussed on this site, please e-mail grayonclaims@gmail.com.