Case 1:12-cv-00367-GMS Document 107 Filed 01/15/14 Page 1 of 2 PageID #: 2005

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

) ) ) ) ) ) ) ) ) )

CUBIST PHARMACEUTICALS, INC., Plaintiff,

v.

C.A. No. 12-367-GMS

HOSPIRA, INC., Defendant.

______________________________)
ORDER

Presently before the court is the defendant's letter request to file a motion for summary judgment on the issue of whether the Certificate of Correction for U.S. Patent No. RE 39,071 is invalid because the error it corrected was not "of minor character" under 35 U.S.C. 255, (D.I. 101), the plaintiffs response (D.I. 102), and the defendant's reply (D.I. 103). The Federal Circuit has held "that a mistake the correction of which broadens a claim is not a 'mistake of ... minor character"' under 255. Superior Fireplace Co. v. Majestic Prods.
Co., 270 F.3d 1358, 1376 (Fed. Cir. 2001). Whether a claim is "broadened through correction

requires interpreting the old and new versions of that claim, and then determining whether the new version covers territory that the old one did not." Central Admixture Pharm. v. Advanced
Cardiac Solutions, P.C., 482 F.3d 1347, 1353 (Fed. Cir. 2007). That inquiry "poses a question of

law, since the correct scope and meaning of a claim is an issue for the court to decide." !d. However, the Federal Circuit has recognized that while "claim interpretation is ultimately a question of law, ... resolution of that question turns in significant part on underlying facts."
Tillotson, Ltd. v. Walbro Corp., 831 F .2d 1033, 1039 (Fed. Cir. 1987).

Case 1:12-cv-00367-GMS Document 107 Filed 01/15/14 Page 2 of 2 PageID #: 2006

After considering the parties' positions as set forth in their papers, as well as the applicable law, the court denies the defendant's letter request to file a motion for summary

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judgment. (D.I. 101.) While the instant issue is a question of law, the court found in _the claim construction order that "the determination of whether the stereochemistry correction is properly considered a correction of 'minor character' presents questions requiring expert testimony regarding the nature of the error and its correction." (D.I. 59 at 4 n.2.) The court's position has not changed. The defendant raises the same arguments in its letter request to file a motion for summary judgment that it raised in its claim construction briefing. (Compare D.I.s 101 and 103
with 37 and 45.) The court concluded in the claim construction order that the defendant "failed

to present clear and convincing evidence that the Certificate of Correction is invalid." (D.I. 59 at 4 n.2.) Accordingly, underlying issues of material fact remain as to whether the Certificate of Correction is invalid because it broadened theRE 39,071 patent claims. IT IS HEREBY ORDERED that the defendant's letter request to file a motion for summary judgment (D.I. 101) is DENIED.

Dated: January ii_, 2014