Delaware IP Law Blog

It is well-established that plaintiff's choice of forum will be a strong consideration in deciding a motion to transfer. Judge Sleet in denying the defendants' motion to transfer in the case Acuity Brands, Inc. v. Cooper Industries, Inc., again stressed the importance of plaintiff's choice of forum -- particularly where both parties are Delaware corporations and inconvenience is the only argument for transfer. C.A. No. 07-444-GMS, Memorandum (D. Del. July 31, 2008).

Defendants argued that their only tie to Delaware was the fact that they were incorporated here and that the case law provides for transfer where that is the only link to the forum. Id. at 3. The Court found the cases relied on by defendants distinguishable, however, since in those cases there was also simultaneous litigation proceeding in the transfer district, and there is no such parallel litigation here. Id. at 4.

In a continuing trend in D. Del. transfer opinions, the Jumara factors related to location of witnesses and documents are becoming less important to the analysis. The Court has held that party-witnesses such as employees "are presumed willing to testify at trial" and therefore are not part of the analysis. Id. at 5. And even in the case of third-party witnesses, "a flight to Delaware is not an onerous task warranting transfer." Id. Finally, in this age of electronic discovery, the location of documents becomes almost irrelevant. Id.

For a copy of the opinion see here.

At the recent annual luncheon held by the Delaware chapter of the Federal Bar Association, Judge Sleet presented on the "state of the court." As part of his presentation, the Court provided attendees with a copy of the first "Annual Report of the United States District Court for the District of Delaware 2008." The report provides a number of interesting statistics on the continuing growth in case load and patent filings.

In 2007, 19% of civil case filings in the district were for patent cases. Delaware held 17 patent trials in 2007, 8 of which were bench trials. The total number of patent trials in Delaware during 2007 was nearly 20% of the total held nationwide. The District of Delaware continues to be first in the country for number of patent cases per judge. Finally, 157 patent cases were filed in this district last year, up from 139 in 2006.

Despite all of the discussions regarding a downturn in patent filings nationwide, patent litigation continues to grow and thrive in the District of Delaware!

Yesterday, Chief Judge Anthony J. Scirica of the Third Circuit Court of Appeals designated several Pennsylvania district judges to preside over cases litigated in the District of Delaware. According to the Court's six standing orders, selected judges from the Eastern District of Pennsylvania will immediately begin hearing newly filed District of Delaware cases.

The six judges are: Hon. Harvey Bartle III, Hon. Stewart Dalzell, Hon. Legrome D. Davis, Hon. J. Curtis Joyner, Hon. Robert F. Kelly, and Hon. Eduardo C. Robreno. The designation orders are available on the D. Del. website (navigate to "7/28/2008" link).

According to comments made by D. Del. Chief Judge Gregory M. Sleet at today's Federal Bar Association meeting, the visiting judges will hear every fourth civil case brought in this district.

7/22: Cephalon, Inc. and CIMA Labs, Inc. v. Barr Pharmaceuticals, Inc. and Barr Laboratories, Inc. (patent infringement)
7/22: AstraZeneca LP, Aktiebolaget Draco, KBI-E Inc. and KBI Inc. v . Mylan Pharmaceuticals, Inc. (patent infringement)
7/24: Novartis Corporation and Novartis Pharmaceuticals Corporation v. Teva Parenteral Medicines, Inc., Teva Pharmaceuticals USA, Inc. and Teva Pharmaceutical Industries, Ltd. (patent infringement)
7/25: Brigham and Women's Hospital Inc., NPS Pharmaceuticals, Inc., Amgen, Inc. v. Teva Pharmaceuticals USA, Inc., Teva Pharmaceutical Industries Ltd. and Barr Laboratories, Inc. (patent infringement)
7/25: National Semiconductor Corporation v. LSI Corporation and Agere Systems Inc. (patent infringement)
7/25: Endo Pharmaceuticals and Penwest Pharmaceuticals Co. v. Impax Laboratories, Inc. (patent infringement)

On July 29th at 12:00 pm at the Du Barry room in the Hotel DuPont there will be a special presentation by Chief Judge Sleet of the “Annual Report of the U.S. District Court for the District of Delaware to the Federal Bar Association 2008”. The meeting will also include the FBA Annual Meeting and a discussion of amendments to the bylaws and election of new officers as well as the FBA Awards Presentation. The cost for this event will be $45. To register, please email or call Anita Garvey at Richards Layton & Finger at 651-7841 or garvey@rlf.com. Checks should be made payable to the Federal Bar Association.

For a copy of the flyer see here.

We recently reported on an invalidity decision by District Judge Joseph J. Farnan Jr. that declined to give effect to a so-called terminal disclaimer. Earlier this week, the Court followed that post-trial opinion with a decision resolving the parties' evidentiary disputes. Among those disputes? The admissibility of the same disclaimer.

In its opinion, the Court noted that plaintiffs sought to introduce the disclaimer after the close of evidence. Although it acknowledged "concern" over the timeliness of the filing, the Court nonetheless allowed the document into evidence. As part of the patent-in-suit's prosecution history, the disclaimer became on filing an "admissible supplementation of an already identified trial exhibit."

As a result, the Court concluded, the "issue of timeliness is more appropriately addressed in the context of the disclaimer's effectiveness, rather than its admissibility."

Boehringer Ingelheim Int'l GMBH v. Barr Labs. Inc., C.A. No. 05-700-JJF (D. Del. July 15, 2008) (Farnan, J.).

7/3: Grape Technology Group, Inc. and kgb USA, Inc. v. Jingle Networks, Inc. (patent infringement)
7/10: Cass and Crew Inc., LLC v. MGI Graphics, Inc. (patent infringement)
7/10: AstraZeneca Pharmaceuticals LP, AstraZeneca UK Limited, IPR Pharmaceuticals, Inc. and Shionogi Seiyaku Kabushiki Kaisha v. Teva Pharmaceuticals USA (patent infringement)
7/15: Channel Intelligence Inc. v. SBSH Mobile Software Ltd. and Uwyn Bvba/Spri (patent infringement)
7/15: Channel Intelligence Inc. v. Lemonade Inc., Scott Aikin, DeBrun Design Inc., Listafterlist.com, LLC, MindValley LLC, My Life Registry LLC, On My List LLC, Remember the Milk Inc., Shimon Rura, Stylehive Inc., Sprout Commerce Inc., Chad Van Norman, WhiteStripe Inc., WishCentral Inc., WishList.com Inc., Zlio Inc. and Zlio USA Inc. (patent infringement)

Judge Farnan recently construed the terms below for claims related to technology used to "optimize the rate at which data can be transmitted across communication channels." CIF Licensing, LLC v. Agere Systems, Inc., C.A. No. 07-170-JJF, Memo. Op. (D. Del. July 10, 2008):

-"receiver"
-"line probing processor"
-"selector"
-"for selecting one of the plurality of frequency bands"
-"for selecting one of the plurality of bit rates"
-"constellation"
-"constellation switching"
-"can be"
-"frame selector"
-"zero insertion unit"
-"signal constellation selector/mapper"
-"operably coupled"

Judge Farnan further found that the preambles of certain claims were limiting under the recent Federal Circuit decision Symantec Corp. v. Computer Assocs. Int'l Inc., 522 F.3d 1279 (Fed. Cir. 2008).

A copy of the opinion can be found here.

In the past month, two juries have come back from deliberations with verdicts in favor of the plaintiff patent-holder. On June 13, 2008, in the Elan Pharmaceuticals Inc. v. Abraxis Bioscience Inc. case, the jury found that Abraxis's Abraxane breast cancer drug infringed two of Elan's patents and that these patents were valid and enforceable. The jury did not find willful infringement. Elan was awarded $55,230,000 in damages based on a 6% reasonable royalty rate for an approximately 3 1/2 year period.

See a copy of the verdict form here.

On July 1, 2008, in the Linear Technology Corporation v. Monolithic Power Systems, Inc. case, the jury again came back with a verdict for the plaintiff. In this case involving semiconductor technology, the jury found that the defendant infringed the plaintiff's patent and that the patent was valid. The parties had previously stipulated to nominal damages in the event that the jury found infringement.

See a copy of the verdict form here.

The question that arises is whether these verdicts are further examples that the District of Delaware is a "plaintiff/patent holder-friendly" forum or whether there is no clear trend in verdicts in this district. Keep watching for a future post analyzing the trend in jury verdicts in this district...

Last week's ANDA win by a generic-drug manufacturer in the District of Delaware is notable for many reasons, chief among them the Court's double patenting analysis. See IP Law360 (subscription). But Judge Farnan's opinion is also notable for its discussion of an obscure term-extension device, the Section 253 terminal disclaimer.

After recounting the underlying family of applications, and the concomitant risk of double patenting, the Court addressed -- and rejected -- the patentee's assertion that its partial disclaimer of the patent-in-suit's remaining term mooted an invalidity finding. By doing so, the Court highlighted the importance of timing when filing a terminal disclaimer.

The Court began by noting the "dual problem" in the litigation: that the disclaimer was filed near the conclusion of trial and after the expiration of the earlier patent. Looking to the limited Federal Circuit precedent, the Court concluded that a "terminal disclaimer may overcome a nonstatutory double patenting rejection only if the earlier patent has not yet expired."

Beyond the statutory arguments, the Court also expressed concern about the patentee's delay in seeking the disclaimer:

[E]xtensive delay in filing a document which may ultimately moot a double patenting issue can have harsh effects on the judicial system as a whole resulting in gamesmanship during trial, and/or a waste of the Court's and the parties' resources. (Op. at 22-23 n.8)

Having filed the disclaimer after the earlier patent's expiration, the Court concluded that the patentee could not invoke Section 253's safe harbor provisions in its efforts to escape a finding of invalidity.

Boehringer Ingelheim Int'l GMBH v. Barr Labs. Inc., C.A. No. 05-700-JJF (D. Del. June 26, 2008) (Farnan, J.).

6/9: Takeda Pharmaceutical Co. Ltd., TAP Pharmaceutical Products Inc. v. Barr Pharmaceuticals Inc. and Barr Laboratories, Inc. (patent infringement)
6/9: Symbol Technologies Inc. v. Janam Technologies LLC (patent infringement)
6/9: StreamServe AB v. Exstream Software LLC and Hewlett-Packard Co. (patent infringement)
6/9: In re Alfuzosin Hydrochloride Patent Litigation (patent infringement)
6/9: Ethypharm S.A. v. Barr Laboratories Inc. and Barr Pharmaceuticals Inc. (patent infringement)
6/10: Samsung Electronics Co. Ltd. v. Petters Group Worldwide LLC, Polaroid Corporation and Westinghouse Digital Electronics LLC (patent infringement)
6/11: Sanofi-Aventis and Sanofi-Aventis U.S. LLC v. Sun Pharmaceutical Industries Ltd., Sun Pharmaceuticals Industries, Inc., Sun Pharma Advanced Research Co., Ltd. and Sun Pharma Global, Inc.
6/12: Chi Mei Optoelectronics Corp. and Chi Mei Optoelectronics USA Inc. v. LG Display Co., Ltd., LG Display America, Inc. (patenet infringement)
6/13: In re Rosuvastatin Calcium Patent Litigation (patent infringement)
6/20: St. Clair Intellectual Property Consultants Inc. v. Fujifilm Holdings Corporation, Fujifilm Corporation, Fuji Photo Film Co., Ltd., Fuji Photo Film USA, Inc., Fuji USA, Inc., et al. (patent infringement)
6/20: St. Clair Intellectual Property Consultants Inc. v. Research in Motions, Ltd., Research in Motion Corp. and General Imaging Co. (patent infringement)
6/20: Dey LP and Dey Inc. v. Sepracor Inc. (patent infringement)
6/23: Sanofi-Aventis and Sanofi-Aventis US, LLC v. Apotex Corp. and Apotex Inc. (patent infringement)
6/24: Huntley LLC v. Monterey Mushrooms Inc. (patent infringement)
6/24: AstraZeneca Pharmaceuticals LP, AstraZeneca UK Ltd., Shionogi Seiyaku Kabushiki Kaisha IPR Pharmaceuticals Inc. v. Aurobindo Pharma USA Inc. and Aurobindo Pharma Ltd. Inc. (patent infringement)
6/25: Eli Lilly and Co. and the Trustees of Princeton University v. APP Pharmaceuticals LLC (patent infringement)
6/26: Wyeth v. Biovail Corp., Biovail Laboratories International SRL and Biovail Technologies Ltd. (patent infringement)

Our fellow associate, Sara Beth Reyburn attended the Delaware Bar Association Intellectual Property Section's annual meeting last night and has written the following guest post for the Delaware IP Law Blog:

The Honorable Leonard P. Stark shared some "General Thoughts from the Bench" at last night’s Delaware State Bar Association Intellectual Property Section’s annual meeting. Judge Stark shared tips on the practices and procedures he has developed since being appointed to fill the District of Delaware’s newly created second Magistrate position last August.

Judge Stark also cited statistics that show why he is honored to be a part of the district’s "tremendously experienced court". For example, according to Judge Stark’s research, the three District Judges and two Magistrate Judges have served on the federal bench for a collective 69 years and have written close to 3,000 opinions since 2001. The three District Judges have an average caseload of 500 cases each (approximately 90 pending patent cases each). From 1995 to 2007, the time from filing the complaint to trial has generally been less than 23 months. In 2007, 17 (nearly 20%) of the 94 patent cases tried nationwide were in the District of Delaware.

Judge Stark said he has received generous mentoring from his colleague Magistrate Judge Mary Pat Thynge, who is highly respected for her mediation skills. Judge Stark’s research indicated that Judge Thynge has mediated more than 1,150 cases, with an 80% settlement-success rate (including 187 of 272 patent cases). Judge Stark said he has been involved in 33 mediations and estimates his settlement-success rate at around 60%.

Author: Sara Beth Reyburn (sreyburn@ycst.com)

Sara Beth is an associate in Young Conaway's intellectual property, corporate, and litigation and trial practice sections andhas worked on cases involving a variety of intellectual property, corporate, and commercial issues, including patent litigation, trademark and tradename matters, and internet domain name disputes under the ICANN Uniform Domain Name Dispute Resolution Policy. Sara Beth originally joined the firm in 2001 and, after pursuing a writing career for a brief period, returned to the firm in 2006. Sara Beth has assisted on pro bono cases for the Federal Civil Panel of the United States District Court for the District of Delaware. She also volunteers with her hometown's local historical commission.