Bone Care Int’l., LLC v. Pentech Pharms., Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Mar. 22, 2012) (Dow, J.).
Judge Dow held that plaintiff’s U.S. Patent No. 6,903,083 (the “’083 patent”) was invalid based upon a sale more than one year before the ‘083 patent’s filing date and denied defendants’ motion to find the case exceptional and award attorney’s fees, in this case related to vitamin D2. As an initial matter, Judge Dow, although he would have been within his rights to do so, did not deem admitted facts that were not properly contested pursuant to Local Rule 56.1. The Court did, however, explain that it would not consider improper denials.
The Court held that two sales by plaintiff more than one year before the filing date invalidated the ‘083 patent. Plaintiffs argued that they were not in fact sales because while money changed hands, pursuant to a Supply Agreement, plaintiffs retained ownership of the goods. But that argument “fail[ed] to get out of the gate.” The Supply Agreement was for the manufacture of vitamin D2, for which hundreds of thousands of dollars were paid.
“[I]nference upon inference” favored finding the case exceptional and awarding defendants their attorney’s fees. Plaintiffs lacked a plausible explanation for how they were unaware of the invalidating sales. And instead of disclaiming the ‘083 patent and avoiding a large document production, plaintiffs continued asserting it. But there remained a question of fact regarding what information plaintiffs’ executives had regarding the sales and when they had it. The Court, therefore, allowed the parties to take further discovery on those issues before bringing the issue back to the Court.