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Chief Judge Leonard P. Stark recently ruled on several motions in limine in advance of an upcoming jury trial between Idenix and Gilead.  Idenix Pharmaceuticals LLC, et al. v. Gilead Sciences, Inc., et al., C.A. No. 13-1987 (and related cases 14-109-LPS, 14-846-LPS) (D. Del. Nov. 22, 2016).  Of note, Judge Stark denied Idenix’s motion to preclude evidence of certain experiments performed by Idenix, explaining that the “evidence that Plaintiffs may have failed to make a purported embodiment of the patent-in-suit is probative of whether the inventors of the patent-in-suit were in possession of the claimed subject matter as of the filing date; i.e., the evidence is probative of Defendant’s written description defense.”  Judge Stark also denied Idenix’s motion to exclude reference to Idenix’s alleged drafting of claims based on the disclosures of a non-party.  Specifically, the Court found that “[a] reasonable jury could credit Defendant’s evidence that in the immediate aftermath of Pharmasset’s Dr. Schinazi making certain disclosures to Idenix’s patent attorney, Idenix cancelled all pending original claims and added broader claims, which may be probative of Idenix’s inventors not being in possession of the full scope of the ultimately claimed inventions . . . .”

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In a recent Memorandum Order, Chief Judge Leonard P. Stark adopted Magistrate Judge Christopher J. Burke’s Report and Recommendation (the “Report”) dated June 30, 2016 (D.I. 108), which (i) found the terms “access block” and “media block” (collectively, the “block terms”) not indefinite; and (ii) construed the term “providing, by the media block, a clickable icon.” Triplay, Inc. v. Whatsapp, Inc., C.A. No. 13-1703-LPS-CJB (D. Del. Nov. 15, 2016).

First, Defendant (“Whatsapp”) objected to the Report’s conclusion that the block terms are not indefinite, asserting that the block terms must be construed as means-plus-function terms under § 112, ¶ 6. Id. at 2. Judge Stark disagreed, and adopted the Report’s conclusions that the blocks terms should not be construed as mean-plus-function terms, and that the terms are not indefinite. Specifically, Judge Stark found that the rebuttable presumption that § 112 ¶ 6 does not apply was not overcome. Judge Stark observed that the patents at issue “include significantly more detail defining the block terms at issue in this case than the specification of the patent-in-suit” in Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015), cited by Whatsapp in support of its position. Id. at 4. Judge Stark further explained that the patents at issue “disclose adequate structure to define the block terms by describing the internal components and operative algorithms associated with the terms, as explained in the Report.” Id. Judge Stark also found that plaintiff’s (“Triplay”) expert report supported “that a person of ordinary skill in the art would understand, with reasonable certainty, the scope of the algorithmic ‘structure’ invoked by the block terms.” Id. at 5. Judge Stark noted that the “functional language describing the operation of the block terms ‘promotes definiteness because it helps bound the scope of the claims by specifying the operations that the [block terms] must undertake.’” Id. at 7.

Second, Triplay objected to the Report’s construction of the term “providing, by the media block, a clickable icon.” Id. Specifically, Triplay raised two objections: “(1) the phrase ‘clickable icon’ should be limited to a ‘link’ rather than a ‘visual representation that is clickable,’ contrary to the construction recommended in the Report, and (2) the Report erred in declining to construe the larger phrase ‘providing … a clickable icon.’” Id. Denying Triplay’s objections, Judge Stark observed that “[t]here is no clear indication in the intrinsic record that the disputed term should take on any other meaning in the context of the” patents at issue. Id. at 8. Judge Stark further noted that while the “specification can – without an express disavowal – direct a person of ordinary skill in the art to a narrower construction than the words [of a claim] would suggest”, through (for example) an implicit disclaimer, the specifications here do not do so.” Id. (citations omitted).

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In a series of related actions, Chief Judge Leonard P. Stark issued a claim construction opinion in which he concluded that the relevant claims’ preambles were limiting. E.g., Idenix Pharmaceuticals LLC, et al. v. Gilead Sciences, Inc., et al, C.A. No. 13-1987-LPS (D. Del. Nov. 16, 2016).

The Court concluded that the preamble section “method for [the] treatment of Hepatitis C virus infection” that appeared in both patents were claim limitations, as argued by Plaintiffs. Id. at 8-10. The Court concluded that the preambles were “essential to understand[ing] limitations or terms in the claim body” because “a full understanding of the ‘effective amount’ terms [in the claims] depends on what the relevant compounds must be effective for,i.e., the treatment of Hepatitis C. Id. at 9-10 (alterations and emphasis in original) (citations omitted). The Court also adopted Plaintiffs’ proposal that this limitation be given its plain and ordinary meaning. Id. at 10.

E.g., Idenix Pharmaceuticals LLC, et al. v. Gilead Sciences, Inc., et al, C.A. No. 13-1987-LPS (D. Del. Nov. 16, 2016)

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Chief Judge Stark recently granted a motion to stay litigation until the issuance of decisions by the PTAB in related inter partes review proceedings. The PTAB instituted IPR in July 2016 on every claim that is asserted in the District Court litigation and must issue a final written decision by July 2017. 454 Life Sciences Corp. v. Ion Torrent Systems, Inc., et al., C.A. No. 15-595-LPS, Memo. Or. at 4 (D. Del. Nov. 7, 2016). Because of that institution, Judge Stark found a “very strong likelihood that the IPR proceedings will simplify the issues for trial,” particularly given the potential for estoppel and the creation of additional prosecution history. Id. at 5-6. Additionally, the case was “still in its very early stages and much work remains to be done that could be averted by a stay” and the IPR proceedings were “relatively, mature . . . set for oral argument (if requested) . . . [and the] requested stay, therefore, is almost certainly likely to last no longer than eight months.” Id. at 8. Finally, Judge Stark concluded that, despite some degree of direct competition between the parties, the Plaintiff was not likely to be prejudiced by a stay given that the IPR petitions had been filed less than six months into the litigation and the motion to stay had been filed shortly after the PTAB’s decision to institute the IPRs, “which is generally the ideal time at which to file such a request.” Id. at 8-10.

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Judge Gregory M. Sleet recently issued an Order construing various terms across U.S. Patent Nos. 6,417,175 and 8,247,400. Forest Laboratories, LLC v. Apotex Corp., C.A. No. 15-018-consol. (D. Del. Nov. 8, 2016). Notably, Judge Sleet construed the preamble term “a method for treating a bacterial infection” to be limiting. Id. at 4 n.5. Defendants argued that the preamble was not limiting and “merely statement of intended outcome.” Defendants attempted to analogize the preamble to the preamble at issue in Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368 (Fed. Cir. 2001). In Bristol-Myers, “the Federal Circuit found no error in the district court’s interpretation of the phrase ‘for reducing hematologic toxicity’ as non-limiting.” The Federal Circuit found that “the steps of the claimed infusion method are performed the same way regardless of whether there is a reduction in hematologic toxicity” and that “[t]he preamble did not alter or explain the meaning of the term ‘effective amount,’ found in the body of the claim.” Id.

Judge Sleet found defendants’ argument unpersuasive, and was guided by Judge Andrews’ analysis in Sanofi v. Lupin Atlantis Holdings S.A., 2016 WL 5842327 (D. Del. Oct. 3, 2016). Judge Sleet observed that “[t]he claims at issue here do not provide a definition for ‘effective amount’ in the body of the claim. Instead, ‘effective amount’ derives its meaning from the preamble.” Judge Sleet distinguished this case from Bristol-Myers, where “the preamble did not provide antecedent basis for any terms in the body of the claims.” Rather, in Bristol-Myers, “the body of the claim provided the definition for ‘an antineoplastically effective amount’ because the dosage requirements outlined in the claims were described as antineoplastically effective in the specification.” Judge Sleet ultimately determined that “[b]ecause the meaning of effective amount is unclear without the preamble, the preamble is construed as limiting.” Id.

Forest Laboratories, LLC v. Apotex Corp., C.A. No. 15-018-consol. (D. Del. Nov. 8, 2016).

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In a recent Order, Judge Richard G. Andrews granted disclosure of four documents of defendants’ “Indian ‘in-house counsel’ or subordinates of ‘in-house counsel’” after determining that the attorney-client privilege did not protect those documents. Reckitt Benckiser Pharmaceuticals v. Dr. Reddy’s Laboratories SA, C.A. No. 14-1451-RGA (D. Del. Nov. 4, 2016).

As Judge Andrews explained, the “dispositive issue is whether under U.S. privilege law, the three Indian in-house employees constitute ‘a member of the bar of a court, or his subordinate.’” Id. at 3. To resolve this issue, Judge Andrews relied on the opinion of Retired Justice Srikrishna, who previously “opined on the role of Indian in-house counsel in the context of the Indian legal system and whose opinion was requested by Circuit Judge Jordan.” Id. (citing Shire Dev. Inc. v. Cadila Healthcare Ltd., C.A. No. 10-581-KAJ (D.I. 209) (D. Del. June 28, 2012)). Judge Andrews explained:

According to Retired Justice Srikrishna’s opinion, there is “only one class of legal practitioners known as advocates” in India. Only advocates are “entitled to practice the profession of law.” Advocates have the “right to practice throughout the territories of India in all courts, before any tribunal or person legally authorized to take evidence or before any other authority . . . .” Generally, only advocates are “entitled to practice in any court or before any authority or person . . . .” “[I]n-house counsel would not come within the definition of ‘advocate.’” “[A] person who is in full time employment of an employer ceases to be an advocate.”

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In a recent Memorandum Order, Judge Sue L. Robinson resolved various disputes, including defendant’s motion for leave to amend with antitrust counterclaims, limitations on asserted claims and prior art, and whether a certain affidavit was protected under the work product doctrine. Quest Integrity USA, LLC v. Clean Harbors Industrial Services, Inc., C.A. Nos. 14-1482, 14-1483-SLR (D. Del. Nov. 1, 2016).

First, Judge Robinson granted defendant Cokebuster USA Inc.’s motion for leave to file Walker Process antitrust counterclaims, as it was “timely filed and sufficiently pled.” Id. at 1. Judge Robinson ruled, however, that “consistent with the court’s practice, the antitrust counterclaims are hereby bifurcated, to be tried (if at all) after the Federal Circuit has had the opportunity to review the merits of the patent litigation on appeal. Any issues related to discovery shall be addressed at that time.” Id. at 1-2.

Second, Judge Robinson denied plaintiff’s motion for reconsideration, in which plaintiff (“Quest”) complained that “placing limits on the number of claims it can assert through expert discovery and trial is prejudicial.” Id. at 2. Judge Robinson found that “by the time the claim limits were imposed . . . , Quest had sufficient information to choose representative claims: (a) fact discovery was substantially completed; (b) the court’s claim construction order had issued; and (c) Quest initiated the litigation with a preliminary injunction proceeding, giving the parties a substantial amount of information at the outset.” Id. at 2-3.

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In a series of related actions brought by United Access Technologies, Chief Judge Leonard P. Stark issued a claim construction opinion in which the Court also considered Defendants’ motion to strike certain proposed constructions as barred by collateral estoppel. E.g., United Access Technologies, LLC v. Centurytel Broadband Services, LLC, et al., C.A. No. 11-339-LPS (D. Del. Nov. 4, 2016). Defendants argued that Plaintiff was collaterally estopped from re-litigating certain constructions, including arguing that the preambles of the asserted claims were not limiting, based on Magistrate Judge Thynge’s ruling in a prior case brought by Plaintiff’s predecessor-in-interest that had construed several of the same claim terms now at issue. Id. at 5. But “[i]n order to fully consider Defendants’ Motion and other arguments relating to estoppel, the Court found it necessary to review in their entirety all of Plaintiff’s arguments regarding the disputed terms. After doing so, the Court determined that none of these arguments provided a persuasive reason for the Court to depart from Judge Thynge’s claim constructions.” Id. As a result, the Court denied the motion to strike as moot and proceeded with claim construction of each disputed term. Id.

E.g., United Access Technologies, LLC v. Centurytel Broadband Services, LLC, et al., C.A. No. 11-339-LPS (D. Del. Nov. 4, 2016)

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Magistrate Judge Christopher J. Burke recently recommended the denial of § 101 motions relating to cloud computing environment technology.   Kaavo Inc. v. Amazon.com Inc., et al., C.A. No. 15-638-LPS-CJB (D. Del. Nov. 3, 2016); Kaavo Inc. V. Tier 3, Inc., et al., C.A. No. 15-640-LPS-CJB (D. Del. Nov. 3, 2016).  For purposes of its analysis, the Court focused on the defendants’ argument that the patent-in-suit was directed to “an abstract idea . . . of setting up and managing a computing environment.”  Id. at 9.  The Court ultimately agreed that the patent was directed to an abstract idea, but recommended denial of the § 101 motion under the second “inventive concept” prong of Alice, namely because, on the record before the Court, certain claim language “renders it more plausible that claim 11 describes a sufficiently specific way of ‘setting up a cloud computing environment’,”  id. at 22 (emphasis added), and “there appear to be disputed issues of fact here that, when resolved, will bear on whether claim 11’s method would risk disproportionately tying up the use of the underlying ideas[,] . . . or cover all possible ways to achieve the provided result[.]”  Id. at 23 (quotation marks omitted).

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Chief Judge Leonard P. Stark recently rules on several Daubert and summary judgment motions in Masimo Corp. v. Philips Electronics North America Corp., et al., C.A. Nos. 09-80-LPS, 11-742-LPS (D. Del. Oct. 31, 2016).  Of note, Chief Judge Stark granted a Daubert motion seeking to preclude a damages expert from testifying regarding the “basis-for-customer-demand” test in connection with a lost profits opinion.  The Court explained that the test was inconsistent with jury instructions in an earlier related case, to which no objections were lodged, and in any event that the “functional unit” test that was a part of the earlier jury instructions was legally correct.  Id. at 6.

Chief Judge Stark also granted a Daubert motion seeking to preclude testimony regarding European Patent Office proceedings, on the basis that the expert was indisputably not an expert on European patent law and also that such testimony would not be helpful to the jury and could potentially be confusing at trial.  Id. at 8-9.

With respect to the summary judgment motions, Chief Judge Stark granted in part Masimo’s motion for summary judgment of infringement because, the Court explained, the defendant’s own expert opined that the accused products infringed, and the license agreement at issue contained an express disclaimer.  The Court noted, “[a]n implied license will not be found where the applicable licensing agreement has an ‘express disclaimer’ limiting the scope of the license.”  Id. at 13-14.

The Court also granted in part a motion for summary judgment of no infringement under the doctrine of equivalents, agreeing with the defendant’s argument that “Masimo is estopped from relying on the doctrine equivalents to prove infringement because Masimo added [the limitations at issue] to overcome rejections for indefiniteness and double patenting during prosecution.”  Id. at 22.  Because Masimo failed to demonstrate that the amendments to add those limitation were narrowing, the Court found that Masimo failed to rebut the presumption (given that the reasons for and impact of Masimo’s amendments were ambiguous) that prosecution history estoppel applied.  Id. at 23-24.

Finally, the Court granted in part Philips’ motion for summary judgment of no willful infringement of one of Masimo’s patents, on the basis that Masimo failed to present any evidence that Philips’ allegedly infringing conduct was “willful, wanton, malicious, [or in] bad faith” under HaloId. at 34.

The remainder of the issues briefed in the parties’ summary judgment motions presented genuine issues of material fact and were therefore denied.

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