Free Order on Motion to Strike - District Court of Delaware - Delaware

Case 1:04-cv-00968-Gl\/IS Document 93 Filed 06/13/2005 Page 1 of 3
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE F I L E D
ALLERGAN, INC., and ALLERGAN SALES, )
LLC, ) "
Plaintiffs, j DE-?¤H£$T£%EE§°$ZEE
)
v. )
) Civil Action No. 04-968 (GMS)
ALCON INC., ALCON LABORATORIES, )
INC., and ALCON RESEARCH, LTD., )
Defendants. )
ORDER
_ 1. Allergan, Inc. and Allergan Sales, LLC (collectively, "Allergan") filed the above—captioned
action against Alcon Inc., Alcon Laboratories, Inc., and Alcon Research, Ltd. (collectively, "AIcon")
on August 24, 2004. In its complaint, Allergan alleges that Alcon is infringing U.S. Patent No.
6,673,337 (the “‘337 patent") and U.S. Patent No. 6,641,834 (the "‘834 patent"). Presently before
the court are the following motions: (1) Allergan’s Motion to Strike Portions of Defendant’s
Summary Judgment Brief`(D.I. 68); and (2) Allergan’s Motion for Leave to File a Sur-Rep1y(D.I.
91).
2. In its motion to strike, Allergan asks the court to find that portions of Alcon’s brief in support
of its motion for summary judgment of invalidity are beyond the scope of issues which the court
permitted Alcon to move for summary j udgment. Specifically, Allergan contends that Alcon sought
and was granted permission to move for summary judgment based on "whether the claims of the
‘834 patent violate the written description requirement of 35 U.S.C. § 112 because they use the
percentage ‘0.15%."’ (D.I. 69, at 1.) According to Allergan, however, "[m]uch of Alcon’s summary
judgment motion . . . focuses . . . [on] whether there is support for the 0.15% (w/v) concentration

Case 1:04-cv-00968-Gl\/IS Document 93 Filed 06/13/2005 Page 2 of 3
being ‘therapeutically effective,’ as recited in the preambles of the independent claims." (D.I. 69,
at 1.)
3. In its motion for leave to file a sur-reply, Allergan requests the court to consider its short
response to Alcon’s reply brief in support of its summary judgment motion. Allergan also contends
that Alcon violated Rule 7.1.3(c)(2) of the Local Rules for the District of Delaware by raising
material arguments regarding a publicly available, abandoned continuation-in-part application
("CIP") filed by Allergan for the tirst time in its reply brief. Thus, in the alternative, Allergan
requests the court to strike Alcon’s argument regarding the CIP application.
4. After having considered the parties’ submissions, the Scheduling Order, transcripts of the
teleconferences during which Alcon requested to move for summary judgment, and the Delaware
Local Rules, the court concludes that Alcon’s summary judgment briefing on the issue of invalidity
is outside the scope ofthe limited issue for which the court granted it permission to file its motion.'
' According to the Proposed Scheduling Order (D.I. 30) filed by the parties and granted
by the court on February 11, 2005, Alcon’s motion for summary judgment of invalidity of the
‘834 patent "shall be limited to . . . whether the claims of the ‘834 patent violate the written
description requirement of 35 U.S.C. § 112 because they use the percentage ‘O.15%."’ (D.I. 30 il
8a.) Thus, as evidenced by the Scheduling Order, Alcon did not request pemrission to file a
motion for summary judgrrrent of invalidity as to whether 0.15% (w/v) is a "therapeutica1ly
effective" amount of active ingredient. The transcripts from the November 22, 2004 and
December 15, 2004 teleconferences with the court offer additional support for the court’s
conclusion. For example, at the November 22, 2004 teleconference, Alcon, in explaining to the
court that the ‘834 patent is invalid based on "a straightforward lack of written description,"
stated that the ‘834 patent has:
an upper limit on the amount of the active ingredient in the product. This product
was previously sold at .2 percent, and when they [the inventors] canceled the claims
they put a limit in and they claimed the use of the product with up to .15 percent.
There is not a word in the specification that mentions .15 percent. There is not a
word in the specification that mentions an upper limit.
(D.I. 24, at 7.) Alcon also stated that "[w]e simply want to look at the claim and spec. and say
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Case 1:04-cv-00968-Gl\/IS Document 93 Filed 06/13/2005 Page 3 of 3
The court also concludes that Alcon’s reply brief reserves a new argument regarding the CIP
application that should have been raised in its opening brief and, therefore, amounts to
"impermissible ‘sandbagging. "’ Rockwell Techs., LLC v. Spectra—Physics Lasers, Inc., No. Civ. A.
00-589 GMS, 2002 WL 53155, at *3 (D. Del. Mar. 26, 2002) (citing Jordan v. Bellinger, 2000 U.S.
Dist. LEXIS 19233, at *18 (D. Del. April 28, 2000)); see D. Del. L.R. 7.1 .3(c)(2) ("The party filing
the opening brief shall not reserve material for the reply brief which should have been included in
a full and fair opening brief").
Therefore, IT IS HEREBY ORDERED that:
l. Allergan’s Motion to Strike Portions of Defendant’s Summary Judgment Brief
(D.I. 68) is GRANTED.
2. Alcon’s argument conceming the "therapeutically effective" issue will not be
considered by the court.
3. Allergan’s request to strike Alcon’s argument regarding the CIP application (D.I. 91)
from its reply brief in support of its motion for summary judgment is GRANTED.
4. Allergan’s Motion for Leave to File a Sur—Reply is DENIED as moot.

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there is no support for these claims because nothing in the claim relates to the amount." (Id.)
During the December 15, 2004 teleconference, Alcon informed the court that "[t]he second
motion [for summary judgment] relates to an allegation of lack of written description about the
term .15 percent. That is obviously a mathematical term. Everyone knows what .15 percent is.
The question is whether or not the claimed limitations that use .15 percent are supported by the
specification? (D.I. 31, at 3.) As demonstrated by the above examples, Alcon neither requested
nor received permission to submit summary judgment briefing on the issue of whether 0.15%
(w/v) is a "therapeutically effective" amount of active ingredient.
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