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Bone Care International LLC v. Pentech Pharmaceuticals

October 6, 2010

BONE CARE INTERNATIONAL LLC AND GENZYME CORPORATION PLAINTIFFS,
v.
PENTECH PHARMACEUTICALS, INC. AND COBREK PHARMACEUTICALS, INC. DEFENDANTS.



The opinion of the court was delivered by: Judge Robert M. Dow, Jr.

MEMORANDUM OPINION AND ORDER

Before the Court is Pentech Pharmaceuticals, Inc. and Cobrek Pharmaceuticals, Inc.'s ("Defendants") motion to alter and amend [505] and supplemental motion to alter or amend [513] the Court's September 17, 2010, Order [496] granting Bone Care International and Genzyme Corporation's ("Plaintiffs") motion for summary judgment [332] of Defendants' counterclaim and affirmative defense "D." For the reasons stated below, the initial motion to alter or amend [505] is granted in part and denied in part; the supplemental motion to alter or amend [513] is denied.

I. Background

Defendants have asserted various counterclaims and affirmative defenses of patent invalidity in this patent infringement case. [227] Counterclaim and affirmative defense "D" alleges that Plaintiffs engaged in inequitable conduct in prosecuting the '488 application -- a continuation-in-part application that later issued as the '116 patent -- by intentionally failing to submit to the PTO material prior art references that had been disclosed previously in the '488 application's ancestor applications. Plaintiffs moved for summary judgment [332] on counterclaim and affirmative defense "D," arguing that there are no genuine issues of material fact as to whether Plaintiffs satisfied their duty to disclose the prior art references to the PTO, as Plaintiffs disclosed the references in the ancestor applications and bore no additional duty to re-submit the references in the '488 application. Plaintiffs further argued that Defendants had not sufficiently rebutted the presumption that the PTO examiner had reviewed the ancestor applications during prosecution of the '488 application in compliance with governing PTO guidance. The Court agreed, and issued an opinion, Order [496], granting Plaintiffs' summary judgment motion on counterclaim and affirmative defense "D."

Defendants filed a motion to alter or amend [505] the Court's Order [496], requesting that four allegedly incorrect factual statements be withdrawn or corrected. That motion [505] did not request that the Court reconsider and vacate the ultimate ruling of the prior Order [496] -- i.e., the grant of summary judgment. However, during the September 24, 2010, final pre-trial conference, Defendants on the record and in open court requested that the Court reconsider its grant of summary judgment in Order [496]. Defendants subsequently filed a supplemental motion [513] requesting that the grant of summary judgment be reconsidered and vacated. Plaintiffs have responded to the motion, both orally at the pre-trial conference and in writing [see 514].

II. Analysis

It is well established that "[m]otions for reconsideration serve a limited function: to correct manifest errors of law or fact or to present newly discovered evidence." Conditioned Ocular Enhancement, Inc. v. Bonaventura, 458 F. Supp. 2d 704, 707 (N.D. Ill. 2006) (internal quotation marks and citation omitted). In regard to the "manifest error" prong, the Seventh Circuit has elaborated that a motion to reconsider is proper only when "the Court has patently misunderstood a party, or has made a decision outside the adversarial issues presented to the Court by the parties, or has made an error not of reasoning but of apprehension." Bank of Waunakee v. Rochester Cheese Sales, Inc., 906 F.2d 1185, 1191 (7th Cir. 1990). With respect to the second prong, the court of appeals has explained that a motion to reconsider may be appropriate if there has been "a controlling or significant change in the law or facts since the submission of the issue to the Court." Id. Because the standards for reconsideration are exacting, the Seventh Circuit has stressed that issues appropriate for reconsideration "rarely arise and the motion to reconsider should be equally rare." Id. Defendants do not invoke a change of law or the availability of new facts. Accordingly, the Court's consideration is limited to whether its prior Order [496] constitutes "manifest error."

Defendants' motion [505] requested that the Court make the following four amendments to its Order [496] granting summary judgment against Defendants on their counterclaim and affirmative defense "D":

 On page 13 of [496]: "That it should be presumed the examiner reviewed the ancestor applications and the references contained therein."

 On p. 12 of [496]: "Defendants attempt to infer . . . that Examiner Criares did not recall the [eight] references [or the fact that five of them had been relied upon to reject similar claims in the ancestor applications] is not persuasive."

 On page 3 of [496]: "[Plaintiffs] also subsequently submitted an Information Disclosure Statement ("IDS") identifying the '488 application as a continuation-in-part application."

 On page 11 of [496]: "Defendants acknowledge that the IDS for the '488 application identified '488 as a continuation-in-part application. . . . ."

The Court addresses each purported error in turn.

With respect to the first requested amendment, Defendants argue that the facts support an inference that while reviewing the '488 application, Examiner Criares -- the PTO examiner who reviewed the '488 application and all but the first of its ancestor applications -- forgot that he previously had considered the prior art references of the ancestor applications and failed to review them anew. The Court disagrees. In 1995, at the time that Plaintiffs filed the '488 application, the Manual of Patent Examining Procedure § 609 stated that: "the examiner will consider information cited or submitted to the Office in a parent application when examining a continuing application * * *." M.P.E.P. § 609, 6th ed. (1995). The Court's statement with which Defendants take issue simply reflects the presumption that Examiner Criares fulfilled his duties as an examiner, including the duty set forth under M.P.E.P. ...


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