District Judge Jed S. Rakoff decided four motions for summary judgment filed by defendants Pfizer in relation to their Centrum® products and plaintiff JDS Therapeutics asserted U.S. Patents 5,948,772 (“’772 patent”), 6,136,317 and 6,251,889 (collectively, “The ’772 related patents”) and U.S. Reissue Patent 39,480 (“the RE ’480 patent”).

The court denied in full Pfizer’s motions for summary judgment of invalidity, and on the defenses of laches and equitable estoppel. The court also denied Pfizer’s request for a hearing on laches and equitable estoppel before trail. The court granted in part Pfizer’s motions for summary judgment of dismissal of state law claims; granting the motion as to unjust enrichment, misappropriation of trade secrets, breach of contract, and common law quasi-contract unjust enrichment as time-barred by New York’s statue of limitations, but denying to common law unfair completion because there was a genuine dispute as to whether the claim is time-barred.

Finally, the court granted in part Pfizer’s summary judgment motion of noninfringement. The court found that Pfizer’s combination of chromium picolinate and biotin does not produce a synergistic or greater than additive effect, as the RE ’480 patent requires . Therefore, the court granted summary judgment of noninfringement of the RE ’480 patent. The court held that there was still a genuine dispute as to whether Centrum® Silver® Adults 50+ literally infringes the ’772 related patents, and whether the presence of niacinamide in Pfizer’ products infringed the ’772 patents under the doctrine of equivalents. However, the court narrowed the infringement issue by finding that niacinamide is not the same as nicotinic acid, and therefore Centrum® Silver® Adults 50+, containing only niacinamide, did not literally infringe. Additionally, while a study of the niacinamide in Centrum® Silver® Adults 50+ presents a genuine dispute as to whether these products contain nicotinic acid, JDS Therapeutics failed to show that the other 13 accused products literally infringe the ’772 patent by containing nicotinic acid. Finally, the court rejected JDS Therapeutics’ theory that niacinamide breaks down into nicotinic acid upon ingestion because it was not raised in the infringement contentions or expert reports.

Case: JDS Therapeutics LLC v. Pfizer Inc., No. 12 Civ. 6781(RJS) (S.D.N.Y. January 31, 2014)