Citing Need for Claim Construction, DNJ Court Denies Defendant’s Motion for Judgment on Pleadings

In Tolmar Therapeutics, Inc. v. Foresee Pharmaceuticals Co., Ltd., the United States District Court for the District of New Jersey recently denied the defendant’s motion for judgment on the pleadings, reasoning that the motion could not be decided without claim construction. The plaintiff alleges that the defendant’s product CAMCEVI® infringes the plaintiff’s patent, which also covers the plaintiff’s Eligard® product. Both products are approved prostate cancer medications.

Claim 1 of the patent-in-suit is directed to a controlled release composition that includes a polymer with an alkane diradical that comprises “about 4 to about 8 carbons.” The defendant moved for judgment on the pleadings pursuant to Fed. R. Civ. P. 12(c) arguing (1) that the term “about 4 to about 8 carbons” in the patent-in-suit meant that the defendant’s use of 12 carbons (see, e.g., ECF No. 39 at 1) in its product could not literally infringe; and (2) that the plaintiff could not rely on the doctrine of equivalents, because the use of the term “about” in the claims limited the applicability of the doctrine of equivalents and because of the disclosure-dedication rule.

In denying the defendant’s motion, United States District Judge Evelyn Padin reasoned that both the plaintiff’s literal infringement and doctrine of equivalents theories required the court to construe the term “about 4 to about 8 carbons,” because “‘[a]bout avoids a strict numerical boundary, and ‘must be interpreted in its technologic and stylistic context.’” The court noted that courts generally “hesitate” to grant motions for judgment on the pleadings prior to claim construction, and that such motions are only granted where “the issues are more factually straightforward or purely legal.” Because the claim in this case was “not so straightforward,” the court denied the defendant’s motion.

Gibbons will continue to monitor and report developments in patent litigation in the District of New Jersey.

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