UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK
June 26, 2009
INFOSINT, S.A., PLAINTIFF,
H. LUNDBECK A/S, ET AL., DEFENDANTS.
The opinion of the court was delivered by: Lewis A. Kaplan, District Judge.
Plaintiff charges defendants with infringing its patent on a process for the synthesis of a chemical compound used in the manufacture of certain pharmaceuticals by selling in the United States the antidepressant drug citalopram, which defendants allegedly made in part by using plaintiff's patented process. The matter is before the Court on defendants' motion for summary judgment dismissing the complaint.
Plaintiff Infosint, S.A. ("Infosint") owns U.S. Patent 6,458,973 (the "'973 patent"), which claims an improved process for making the compound 5-carboxyphthalide, an intermediate product in the synthesis of citalopram. Citalopram is a well-known antidepressant marketed in the United States under the names Celexa and Lexapro.*fn1
Defendants, H. Lundbeck A/S and subsidiary Lundbeck, Inc. (collectively "Lundbeck"), as well as Forest Laboratories, Inc., and Forest Pharmaceuticals, Inc. (collectively "Forest"), manufacture, market, and sell citalopram.*fn2 Lundbeck, a Danish corporation, and its suppliers manufacture the 5-carboxyphthalide used in Lundbeck's production of citalopram at seven facilities located outside of the United States.*fn3
Defendants originally moved for summary judgment dismissing the complaint on the ground that none of the manufacturing processes used at any of the facilities that produce 5-carboxyphthalide for Lundbeck infringes plaintiff's '973 patent. As a result of this Court's claim construction decision,*fn4 however, defendants have narrowed the scope of their motion and now seek in substance partial summary judgment dismissing only the claim of infringement based on the use by defendants of the 5-carboxyphthalide manufactured at the Blue Circle Corporation only.*fn5
A. Legal Standard
Summary judgment is appropriate if there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law.*fn6 The Court must view the facts in the light most favorable to the nonmoving party*fn7 and the moving party has the burden of demonstrating the absence of a genuine issue of material fact.*fn8 Where the burden of proof at trial would fall on the nonmoving party, however, it ordinarily is sufficient for the movant to point to a lack of evidence on an essential element of the nonmovant's claim.*fn9 In that event, the nonmoving party must come forward with admissible evidence*fn10 sufficient to raise a genuine issue of fact for trial or suffer an adverse judgment.*fn11
A patentee may demonstrate infringement of its patent claim by either or both of two means. To prevail on a claim of literal infringement, the patentee must prove that the accused process contains each limitation found in the asserted claim.*fn12 If the accused process lacks even a single claim limitation, there is no literal infringement as a matter of law.*fn13 Alternatively, a process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe under the doctrine of equivalents if there is no substantial difference between the limitations of the claim and the accused process.*fn14 The "all limitations" rule applies also under the doctrine of equivalents. Thus, an accused process infringes only "if it contains each limitation of the claim, either literally or by an equivalent."*fn15
Defendants argue that the Blue Circle process does not infringe claim 24*fn16 of the '973 patent because that process is run below 110§ C at all times, whereas the claim is limited to reactions "heating the mixture at 120-145§ C."*fn17 The only evidence they cite for that proposition is a one-page document marked Exhibit LL.*fn18
Exhibit LL purports to be a photocopy of a letter from the Blue Circle Corporation. It is printed on corporate letterhead, dated October 12, 2007, and addressed to "whom it may concern" at H. Lundbeck A/S in Denmark. In place of the author's name and title, the signature block reads only, "Authorised Signatory." The signature itself is illegible.*fn19
The body of the letter reads in its entirety: "This declaration confirms that all batches of 5-Carboxyphthalide shipped to H. Lundbeck A/S or subsidiaries were manufactured by Blue Circle at wholly or partially owned facilities according to the following conditions:
* Oleum concentration at 65%
* Reaction temperature of not more than 110 degrees Celsius
* Reaction conducted at a pressure higher than atmospheric pressure "The yearly production capacity of Blue Circle for 5-carboxyphthalide was as of October 2002 approximately 5-10 MT/yr. In 2004 the capacity was 70-80 MT/yr. "Blue Circle remains at your disposal for any further inquires."*fn20
Federal Rule of Civil Procedure 56(e) provides that "[s]upporting and opposing affidavits [on summary judgment motions] shall be made on personal knowledge, shall set forth such facts as would be admissible in evidence, and shall show affirmatively that the affiant is competent to testify to the matters stated therein."*fn21 Were there any doubt as to its meaning, it long ago was eliminated by a parade of decisions making clear that only admissible evidence may be considered in passing on motions for summary judgment.*fn22
Exhibit LL is not admissible evidence of the temperature at which the Blue Circle process is conducted. Even assuming its authenticity,*fn23 its assertion that the temperature in that process does not exceed 110§ C is an out-of-court statement offered to prove the truth of the matter asserted -- in other words, it is paradigmatic hearsay and therefore not admissible.*fn24 In any case, plaintiff's expert has opined that running a reaction to synthesize 5-carboxyphthalide on an industrial scale at less than 110§ C would be "highly unlikely."*fn25 Accordingly, even if Exhibit LL were admissible, there would be a genuine issue of material fact as to whether the Blue Circle process infringes claim 24 of the '973 patent.*fn26
Defendants' motion for partial summary judgment [docket item 76] is denied.