LITE DEPALMA GREENBERG, LLC

Allyn Z. Lite 

Michael E. Patunas 

Mayra V. Tarantino 

Two Gateway Center, 12th Floor 

Newark, New Jersey 07102 

Telephone: (973) 623-3000 

Facsimile: (973) 877-3872 

alite@litedepalma.com 

mpatunas@litedepalma.com 

mtarantino@litedepalma.com 

Attorneys for Defendants Hanmi USA, Inc., 

Hanmi Pharmaceutical Co., Ltd., 

Hanmi Fine Chemical Co., Ltd., and Hanmi 

Holdings Co., Ltd. 

IN THE UNITED STATES DISTRICT COURT 

THE DISTRICT OF NEW JERSEY 

ASTRAZENECA AB, AKTIEBOLAGET 

HÄSSLE, ASTRAZENECA LP, KBI INC., 

and KBI-E INC., 

 Plaintiffs and 

 Counterclaim Defendants, 

 v. 

HANMI USA, INC., HANMI 

PHARMACEUTICAL CO., LTD., HANMI 

FINE CHEMICAL CO., LTD, and HANMI 

HOLDINGS CO., LTD., 

 Defendants and 

 Counterclaim Plaintiffs. 

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Civil Action No. 3:11-CV-00760-JAP-TJB 

HANMI’S OPPOSITION TO ASTRAZENECA’S MOTION 

FOR RECONSIDERATION OF CLAIM CONSTRUCTION

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TABLE OF CONTENTS 

I. INTRODUCTION ...............................................................................................................1

II. LEGAL STANDARD ..........................................................................................................2

III. ARGUMENT .......................................................................................................................3

A. The Rambus Case is Not “Controlling” ...................................................................3

B. The Intrinsic Evidence Confirms the Court’s Claim Construction ..........................4

C. The Presumption of Claim Differentiation was Overcome .....................................6

D. Second Bites at the Apple are Against Public Policy ..............................................8

IV. CONCLUSION ....................................................................................................................8

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TABLE OF AUTHORITIES 

Cases

Bowers v. Nat'l Collegiate Athletic Assoc., 130 F. Supp. 2d 610 (D.N.J. 2001) ............................ 2 

Carmichael v. Everson, 2004 U.S. Dist. LEXIS 11742 (D.N.J. May 21, 2004) ............................ 2 

Dunn v. Reed Group, 2010 U.S. Dist. LEXIS 2438 (D.N.J. Jan. 13, 2010) ................................... 2 

Kraft Foods,Inc. v. Int'l Trading Co., 203 F.3d 1362 (Fed. Cir. 2000) .......................................... 7 

Krishanthi v. Rajaratnam, 2011 U.S. Dist. LEXIS 53470 (D.N.J. May 18, 2011) ........................ 2 

Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533 (Fed. Cir. 1991) ............................................... 6, 7 

Liebel-Flarsheim v. Medrad, Inc., 358 F.3d 898 (Fed. Cir. 2004) ................................................. 6 

McLaurin v. East Jordan Iron Works, Inc., 666 F. Supp. 2d 590 (E.D.N.C. 2009) ....................... 8 

N.V.E. v. Palmeroni, 2012 U.S. Dist. LEXIS 78215 (D.N.J. June 5, 2012) ................................... 2 

Official Comm. Of Unsecured Creditors of Color Tile, Inc. v. Coopers & Lybrand, LLP, 

322 F.3d 147 (2d. Cir. 2003) ...................................................................................................... 7 

Oritani Sav. & Loan Ass'n v. Fidelity & Deposit Co., 744 F. Supp. 1311 (D.N.J. 1990) .............. 2 

Panna v. Firstrust Sav. Bank, 760 F. Supp. 432 (D.N.J. 1991) ...................................................... 2 

Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ............................................................ 5, 7 

Seachange Int’l, Inc. v. C-COR, Inc., 413 F.3d 1361 (Fed. Cir. 2005) .......................................... 6 

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Defendants Hanmi USA, Inc., Hanmi Pharmaceutical Co., Ltd., Hanmi Fine Chemical 

Co., Ltd. and Hanmi Holdings Co., Ltd. (collectively “Hanmi”) respectfully submit this brief in 

opposition to plaintiffs AstraZeneca AB, Aktiebolaget Hässle, AstraZeneca LP, KBI Inc. and 

KBI-E Inc. (collectively “AstraZeneca”) Motion for Reconsideration of Claim Construction, 

filed December 21, 2012 (D.I. 260). 

I. INTRODUCTION 

The meaning of the term “alkaline salt” as used in the ’504 patent has been extensively 

briefed, thoroughly discussed in AstraZeneca’s expert reports and argued at length before this 

Court at the May 16, 2012 Markman hearing. The Court adopted Hanmi’s proposed construction, 

citing the intrinsic evidence and addressing AstraZeneca’s respective arguments. 

AstraZeneca’s present motion for reconsideration is premised solely on its disagreement 

with the Court’s conclusions, and is entirely improper. Requests for reconsideration are 

governed by Local Rule 7.1, requiring a showing of a matter or controlling decision of law which 

the party believes was overlooked by the Court. AstraZeneca’s motion must fail because it has 

not cited to a single controlling decision or other matter that was not already contended, briefed, 

responded to, replied to, argued, opposed and considered by the Court. AstraZeneca does not 

allege an intervening change in controlling law or present newly-discovered evidence that was 

previously unavailable. Indeed, AstraZeneca’s entire brief consists of arguments from its prior 

submissions, evidence that the Court considered in rendering its claim constructions, and cases 

and other materials that were available before briefing closed and the conclusion of oral 

argument. AstraZeneca’s effort to obtain reconsideration of the Court’s claim construction 

ruling consists of repackaging facts, authorities and arguments from its previous briefs, is little 

more than backtracking without basis, and should not be countenanced. 

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II. LEGAL STANDARD 

 Local Rule 7.1(i) requires that a party moving for reconsideration set forth the matter or 

controlling decisions which the party believes the court has overlooked. Reconsideration 

requires more than a showing of disagreement with the court’s decision. Panna v. Firstrust Sav. 

Bank, 760 F. Supp. 432, 435 (D.N.J. 1991). A party seeking reconsideration fails to meet its 

burden if it merely presents “a recapitulation of the cases and arguments considered by the Court 

before rendering its original decision.” Dunn v. Reed Group, 2010 U.S. Dist. LEXIS 2438 at *4-

*5 (D.N.J. Jan. 13, 2010) (citations omitted). A court will only grant such a motion if the matters 

overlooked might reasonably have resulted in a different conclusion. Bowers v. Nat'l Collegiate 

Athletic Assoc., 130 F. Supp. 2d 610, 613 (D.N.J. 2001), and it is improper on a motion for 

reconsideration to “ask the Court to rethink what it ha[s] already thought through -- rightly or 

wrongly.” Oritani Sav. & Loan Ass'n v. Fidelity & Deposit Co., 744 F. Supp. 1311, 1314 (D.N.J. 

1990) (citations omitted). Only three grounds permit reconsideration: (1) an intervening change 

in controlling law has occurred; (2) evidence not previously available has become available; or 

(3) reconsideration is necessary to correct a clear error of law or prevent manifest injustice. 

Carmichael v. Everson, 2004 U.S. Dist. LEXIS 11742 at *2-*3 (D.N.J. May 21, 2004) (citations 

omitted). Motions for reconsideration are not vehicles for re-argument. N.V.E. v. Palmeroni, 

2012 U.S. Dist. LEXIS 78215 (D.N.J. June 5, 2012). “[A] motion for reconsideration is not an 

appeal . . . . [R]econsideration is inappropriate where the motion merely raises a party’s 

disagreement with the Court’s decision or seeks to rehash arguments already raised and rejected.” 

Krishanthi v. Rajaratnam, 2011 U.S. Dist. LEXIS 53470 at *6-*7 (D.N.J. May 18, 2011). 

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III. ARGUMENT 

AstraZeneca’s motion seeks reconsideration of the Court’s claim construction order 

based upon the Rambus case, the intrinsic evidence of the ’504 patent (including its prosecution 

history), and the doctrine of claim differentiation. None of its arguments meet the standard for 

reconsideration under Local Rule 7.1, and none warrant the serious attention of this Court. 

A. The Rambus Case is Not “Controlling” 

First, AstraZeneca’s Motion charges the Court with having overlooked and having failed 

to apply Rambus Inc. v. Infineon Technologies, 318 F.3d 1081, 1094-95 (Fed. Cir. 2003), stating 

that “the Court did not cite Rambus or appear to follow that decision in construing the term in 

question.” (D.I. 260-1, p. 7). 

It is wholly irrelevant that the Court did not cite the Rambus case in its decision regarding 

“alkaline salt.” The Court did not cite to at least 10 other cases AstraZeneca mentioned in its 

briefs regarding “alkaline salts” either, nor was it required to do so. But that does not mean 

anything was “overlooked.”1 The Court squarely addressed the basic legal principles set forth in 

the Rambus case as argued by AstraZeneca (D.I. 176, p. 5; D.I. 260-1, pp. 3-7) in its discussion 

of the role of intrinsic evidence in the interpretation of claim terms (D.I. 257, p. 4), and the Court 

acknowledged the proscriptions against importing limitations from the specification into the 

claims. Id.

 

1

 It is telling that AstraZeneca makes much of the Rambus case in the present Motion, while in 

the briefs, Rambus was relegated to a single mention in a string cite in the Reply brief on a single 

page, without even a parenthetical explanation of its “controlling” nature. (D.I. 176, p. 5). Nor 

did AstraZeneca ever mention the Rambus case during the Markman hearing. Moreover, 

AstraZeneca cited the Rambus case for the unremarkable and well-known proposition that claims 

are not generally limited to embodiments referred to in the specification unless the rest of the 

intrinsic evidence is consistent with such a reading. (D.I. 176, p. 5). 

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AstraZeneca urges that Rambus requires that claims not be restricted by “a couple of 

potentially limiting statements in the specification.” (D.I. 260-1, p. 7). On the merits, 

AstraZeneca overstates Rambus, and thus, its “controlling” nature. The court in Rambus

specifically found that neither the claims nor the specification of the patent-in-suit compelled a 

definition of “bus” that was different from its ordinary meaning. Rambus at 1094-95. In contrast, 

the Court here specifically found that “the patentee has given a definition to ‘alkaline salts’ 

which governs construction of this term.” (D.I. 257, p. 6). Rambus isn’t controlling. It is 

inapplicable because it is based on a finding that no express definition was provided in the 

specification, and the present Order was based on a finding that a definition was expressly 

provided in the specification. 

B. The Intrinsic Evidence Confirms the Court’s Claim Construction

Second, AstraZeneca’s Motion charges the Court with having overlooked or 

misapprehended the prosecution history of the ’504 patent in reaching its construction. Yet, the 

prosecution history was extensively briefed and argued before the Court. The whole of the 

intrinsic evidence record here undoubtedly confirms the construction reached by the Court for all 

of the reasons provided in the Court’s Opinion as well as those presented in Hanmi’s Markman 

briefing and at the Markman hearing. 

AstraZeneca’s repeated statements in the ’504 patent specification regarding the six 

species disclosed as “alkaline salts” were considered by the Court (D.I. 257, pp. 7-8; see also D.I. 

132, pp. 2-4; D.I. 174, pp. 1-5), and determined to be an express definition of the term that 

overcame any presumption that the plain and ordinary meaning should control. (D.I. 257, p. 6). 

Unable to raise any new arguments in its Motion for Reconsideration, AstraZeneca argues that 

“the court appears to have placed undue reliance on language of the specification” in construing 

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the term “alkaline salt” (D.I. 260-1, p. 10), an odd position to take based upon its opening 

Markman brief, wherein AstraZeneca stated that the patent specification “can be ‘the single best 

guide to the meaning of a disputed claim term’, due to its statutory role to ‘describe the claimed 

invention in ‘full, clear, concise and exact terms.’’” (D.I. 133, p. 9, citing Phillips at 1316). 

Having represented that a patent specification is the single best guide to the meaning of the claim 

term, AstraZeneca should not now be heard to argue that the Court placed undue reliance upon it. 

In any case, as the Court found here based on the Markman record and numerous authorities, an 

express definition in the specification trumps all other evidence. 

Beyond the specification, AstraZeneca again argues the ’504 prosecution history compels 

its proposed construction. Yet AstraZeneca presents the same arguments already briefed and 

argued before the Court (see D.I. 133 (AZ’s Opening Markman Brief), p. 10; D.I. 200 (AZ’s 

Responsive Markman Brief), pp. 7-8), and offers nothing new.2 (D.I. 260-1, pp. 8-10). 

The Rambus case does not require “reconciliation” between the ’504 specification and the 

prosecution history. (D.I. 260-1, p. 10). As stated above, the Rambus case is not even relevant 

because it was based upon a finding that an express definition was not provided in the 

specification, whereas here the Court concluded an express definition plainly was provided. 

Most inappropriate is AstraZeneca’s statement that this Court failed to consider the ’504 

patent prosecution history in issuing its ruling. (D.I. 260-1, pp. 8-9). The Court cited the 

 

2

 In response, Hanmi has already explained that AstraZeneca ignores: (1) the fact that the only 

salts disclosed in the application beyond the Na+ and Mg2+ salts are the Li+, K+, Ca2+ and N+(R)4 

salts, (2) the Examiner’s statement that the scope of the claim would depend on the data 

submitted (and the fact that applicants submitted data on only the Na+

 and Mg2+ salts), (3) the 

express definitions contained in the ’504 specification and (4) the overall absence of any support 

whatsoever in the patent documents for any salt in addition to the six salts that AstraZeneca 

repeatedly characterized as “the invention” of the ’504 patent. 

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applicable law concerning the role of the prosecution history in claim construction analysis (D.I. 

257, p. 4), and the parties briefed the prosecution history in detail (D.I. 132, p. 5; D.I. 133, p. 10; 

D.I. 176, p. 7). Experts opined on the prosecution history (D.I. 208, p. 7; D.I. 132-2, pp. 6-8; 

D.I. ) and this Court heard oral argument on the very portions of the prosecution AstraZeneca 

reargues in its reconsideration paper (May 16, 2012 Markman Hearing Tr., pp. 13-15, 19-20, 32-

36). AstraZeneca’s statement that the Court “appears not to have considered (or given necessary 

weight to) the patent prosecution history” is plainly incorrect. (D.I. 260-1, p. 8). The sole basis 

of AstraZeneca’s argument seems to be that the prosecution was not specifically cited with 

respect to “alkaline salt” in the Court's Opinion, which of course the Court is not required to do.3

C. The Presumption of Claim Differentiation was Overcome 

The Court specifically addressed AstraZeneca’s claim differentiation argument, and 

found that the presumption had been overcome. (D.I. 257, p. 7). 

Nevertheless, AstraZeneca challenges the Court’s ruling based on claim differentiation 

alleging that (1) the cases relied upon by the court are inapposite, and (2) the Court’s ruling is 

inconsistent with the intrinsic evidence. Neither argument has merit. 

Seachange and Laitram were cited for general propositions of law relating to the 

presumption of claim differentiation not being a hard and fast rule, and instances when the 

presumption may be overcome. (D.I. 257, p. 7). The Court neither misapprehended nor 

misapplied the cases. The facts of each case are irrelevant to the legal principles for which they 

were cited, and AstraZeneca has not refuted the legal principles for which each was cited. 

 

3

 The Court does not refer to the prosecution history in its construction of any of the other claim 

terms, either. AstraZeneca is silent about those terms, presumably because its construction was 

adopted. 

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That the Seachange case involved two independent claims does not make its holding and 

the well-settled principles of claim differentiation discussed therein inapposite as urged by 

AstraZeneca. Seachange indeed acknowledged that the doctrine of claim differentiation is its 

strongest when where the claims at issue are related by dependency. See Seachange Int’l, Inc. v. 

C-COR, Inc., 413 F.3d 1361, 1368-69 (Fed. Cir. 2005); see also Liebel-Flarsheim v. Medrad, 

Inc., 358 F.3d 898 (Fed. Cir. 2004). The Court was therefore well aware of the strength of the 

presumption when dependent claims were involved, but considered the presumption overcome in 

light of the strong evidence presented here. Indeed, the Court cited Phillips v. AWH Corp., 415 

F.3d 1303, 1312 (Fed. Cir. 2005) and specifically recognized the exact relationship that is 

present here -- dependent and independent claims. Id. Following its citation of Phillips, the 

Court specifically contrasted independent claim 1 and dependent claim 3 of the ’504 patent in 

conducting its analysis and concluded that the presumption of claim differentiation had been 

overcome. (D.I. 257, p. 7). 

Like the Seachange case, the Laitram case was cited for the settled proposition that 

“[c]laim differentiation is a guide, not a rigid rule.” Laitram Corp. v. Rexnord, Inc., 939 F.2d 

1533, 1538 (Fed. Cir. 1991). AstraZeneca does not dispute that principle of law, and so its 

arguments that the Court misapprehended the applicability of the Laitram case are ill-founded. 

Indeed, Hanmi cited the Laitram case in its responsive Markman brief (D.I. 174, p. 6) for the

exact same legal proposition, but AstraZeneca declined to address Laitram in its third Markman

brief (AstraZeneca’s reply brief) (D.I. 207). Its decision to challenge the Court’s reliance upon 

the Laitram case in the present motion for reconsideration, when it chose not to address that case 

in its reply brief, transparently signals its lack of conviction that the Court misapplied the 

Laitram case. 

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D. Second Bites at the Apple are Against Public Policy

 Public policy favors an end to litigation and recognizes that efficient operation requires 

the avoidance of re-arguing questions that have already been decided. Official Comm. Of 

Unsecured Creditors of Color Tile, Inc. v. Coopers & Lybrand, LLP, 322 F.3d 147, 167 (2d. Cir. 

2003) (“Where litigants have once battled for the court’s decision, they should neither be 

required, nor without good reason permitted, to battle for it again.”). Indeed, motions to 

reconsider are not appropriate vehicles to advance arguments already rejected by the Court or 

new legal theories not argued before the ruling. McLaurin v. East Jordan Iron Works, Inc., 666 

F. Supp. 2d. 590, 596 (E.D.N.C. 2009) (denying motion for reconsideration). AstraZeneca has 

already taken its best shot on the meaning of “alkaline salt,” and its rehashed arguments and new 

theories should be rejected.

IV. CONCLUSION 

 For the reasons stated above, Hanmi respectfully requests that the Court deny Plaintiffs’ 

Motion for Reconsideration of Claim Construction. 

Dated: January 8, 2013 LITE DEPALMA GREENBERG, LLC

s/Mayra V. Tarantino 

Allyn Z. Lite 

Michael E. Patunas 

Mayra V. Tarantino 

Two Gateway Center, 12th Floor 

Newark, New Jersey 07102 

Telephone: (973) 623-3000 

Facsimile: (973) 877-3872 

alite@litedepalma.com 

mpatunas@litedepalma.com 

mtarantino@litedepalma.com 

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Of Counsel: 

SUGHRUE MION, PLLC 

Mark Boland 

Michael R. Dzwonczyk 

Renita S. Rathinam 

2100 Pennsylvania Ave., NW 

Washington, DC 20037-3213 

Telephone: (202) 293-7060 

Facsimile: (202) 293-7860 

mboland@sughrue.com 

mdzwoncyzk@sughrue.com 

rrathinam@sughrue.com 

SUGHRUE MION, PLLC 

John B. Scherling 

4250 Executive Square 

Suite 900 

La Jolla, CA 92037 

Telephone: (858) 795-1180 

Facsimile: (858) 795-1199 

jscherling@sughrue.com 

Attorneys for Defendants and CounterclaimPlaintiffs, Hanmi USA, Inc., Hanmi Pharmaceutical 

Co., Ltd., Hanmi Fine Chemical Co., Ltd., and 

Hanmi Holdings Co., Ltd. 

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CERTIFICATE OF SERVICE 

I hereby certify that on January 8, 2013, I caused a copy of the foregoing HANMI’S 

OPPOSITION TO ASTRAZENECA’S MOTION FOR RECONSIDERATION OF 

CLAIM CONSTRUCTION to be served upon the following counsel by ECF and electronic 

mail:

John E. Flaherty, Esq. 

Jonathan M. H. Short 

McCARTER & ENGLISH 

Four Gateway Center 

100 Mulberry Street 

Newark, New Jersey 07102 

(973) 622-4444 

JFlaherty@mccarter.com 

JShort@mccarter.com 

Henry J. Renk, Esq. 

Bruce C. Haas 

Colleen Tracy 

Joshua I. Rothman 

FITZPATRICK, CELLA, 

HARPER & SCINTO 

1290 Avenue of the Americas 

New York, NY 10104-3800 

(212) 218-2250 

HRenk@fchs.com 

BHaas@fchs.com 

CTracy@fchs.com 

JRothman@fchs.com 

Errol B. Taylor, Esq. 

Fredrick M. Zullow 

MILBANK, TWEED, HADLEY & 

McCLOY LLP 

1 Chase Manhattan Plaza 

New York, New York 10005-1413 

(212) 530-5000 

ETaylor@milbank.com 

FZullow@milbank.com 

Einar Stole, Esq. 

COVINGTON & BURLING LLP 

1201 Pennsylvania Avenue, NW 

Washington, DC 20004-2401 

(202) 662-6000 

EStole@cov.com 

 

 s/Mayra V. Tarantino 

 Mayra V. Tarantino 

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