The opinion of the court was delivered by: Sprizzo, District Judge.
MEMORANDUM OPINION AND ORDER
Plaintiffs Mead Johnson & Company and Bristol-Myers Squibb
Company (collectively "Mead Johnson") bring the instant action
for patent infringement against defendant Barr Laboratories, Inc.
("Barr"), alleging that Barr has infringed U.S. Patent No.
4,258,027 (the "'027 patent") by submitting Abbreviated New Drug
Application ("ANDA") No. 71-196 with the U.S. Food and Drug
Administration ("FDA"). Mead Johnson seeks declaratory and
injunctive relief and its costs and attorney fees incurred in the
prosecution of the instant action. Barr also seeks a declaration
of noninfringement and its costs and attorney fees. Following a
hearing on claim construction and a trial of infringement to the
Court, the Court finds that Barr has infringed the '027 patent
and grants Mead Johnson declaratory and injunctive relief. The
Court denies the parties' cross-motions for costs and attorney
fees. The following constitutes the Court's findings of fact and
conclusions of law.
Plaintiff Mead Johnson & Company is the owner, through
assignment, of the '027 patent, which issued on March 24, 1981,
and is to expire on March 26, 1999. Mead Johnson & Company is a
wholly-owned subsidiary of plaintiff Bristol-Myers Squibb Company
("Bristol"). Bristol is the holder of approved New Drug
Application No. 18-207 for trazodone hydrochloride. Apothecon, a
division of Bristol, sells trazodone hydrochloride 150 mg and 300
mg tablets under the trademark Desyrel ® Dividose ® Tablets.
Desyrel ® Dividose ® Tablets practice the tablet structure taught
by the '027 patent.
The '027 patent issued upon an application for letters patent
filed in the names of Michael K. Ullman, Stephen T. David and
Claude E. Gallian for an invention entitled "Multi-Fractionable
Tablet Structure." The '027 patent describes certain scored
tablet dosage forms that are fractionable into multiple
subdosages. The invention allows convenient patient modification
of dosage by facilitating the fragmenting of the tablet into at
least equal bisectional or equal trisectional dosages through an
arrangement of multiple scorings on the surface of the tablet.
The object of the '027 patent is
to provide a multi-fractionable tablet structure
prepared in a unitary dosage amount and having score
markings disposed selectively such that . . . the
unitary dosage tablet may be readily and conveniently
fractured into at least either bisectional or
trisectional dosage units as desired for patient
'027 patent, col. 2, Ins. 53-66.
Claim 1 of the '027 patent is the only claim at issue in this
litigation. Claim 1 reads as follows:
A tablet structure which comprises a unitary body
having oppositely disposed first and second
substantially horizontal surfaces being joined
respectively by substantially vertical walls; any of
said first horizontal surface, or said second
horizontal surface, or said substantially vertical
walls containing at least two transverse score
markings and at least one other of said surfaces or
walls containing a single transverse score marking
whereby the unitary body may be fractured into at
least equal bisectional or equal trisectional units
The Court held a Markman hearing on the construction of claim 1
on April 23, 1998. See Markman v. Westview Instruments, Inc.,
517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). Prior to
the hearing, the parties stipulated to the construction of the
claim language as follows:
• A "tablet structure" means "a tablet."
• A "unitary body" means "a unit dose which can be
• The phrase "having oppositely disposed first and
second substantially horizontal surfaces being
joined respectively by substantially vertical
walls" means "the top and bottom (non-side)
surfaces and ...