Posted On: November 29, 2006

Another Take On "Reasonable Apprehension of Suit"

<%media(20061129-Epic Systems.pdf|Epic Sys. Corp. v. Acacia Research Corp., C.A. No. 06-255-JJF (D. Del. Nov. 16, 2006))%>

Judge Farnan denied Resource Scheduling Coroporation�s (the codefendant's) motion to dismiss for lack of an actual controversy. Epic received a letter from defendants informing Epic that one of their products infringed defendants' patent and they would need to take a license. The letter went on to state that defendants �intend to add additional parties� to litigation involving the same patent pending in Texas. In addition, the letter proposed royalty rates for a possible license that would �increase over time and as our litigation progresses.� Based on the totality of these circumstances, the Court found that Epic had demonstrated reasonable apprehension of suit sufficient to establish an actual controversy.

Posted On: November 22, 2006

Court Will Not "Rethink" Decision it Already Made

Reminder: a motion for reconsideration is not the tool for raising additional arguments, facts or issues you could have raised during initial briefing of an issue.

On October 26, 2006 Judge Jordan issued a claim construction opinion in <%media(20061122-Ampex claim construction 04-1373a.pdf|Ampex Corp. v. Eastman Kodak Co)%>., C.A. No. 04-1373. Ampex subsequently moved for reargument or reconsideration of the construction of one claim term. Specifically they argued that such relief was appropriate where they allege they did not have an opportunity to address whether the addition of a term was a "narrowing amendment that triggers a presumption of prosecution history estoppel." Ampex argued that they did not make that argument because defendant did not meet their burden of showing that a narrowing amendment had been made, in fact, they chose to assume the presumption was raised and argue that it was overcome. The Court in its opinion held that Ampex was on notice of the issue and had an opportunity to respond and its choice to not "focus its advocacy efforts on whether the amendment at issue was narrowing" does not mean they did not have the opportunity to contest whether the presumption was actually established. <%media(20061122-ampex - 11-20 reconsideration.pdf|Ampex Corp. v. Eastman Kodak Co)%>., C.A. No. 04-1373, slip op. at 3 (D. Del. Nov. 20, 2006) (Jordan, J.). Therefore, the Court denied the motion for reconsideration.

On a side note, the Court also held that prosecution history estoppel does apply to clarifying amendments, even where made under 35 U.S.C. Section 112, Paragraph 2. Id. at 5-6.

So remember to raise and anticipate all arguments and responses thereto.

Posted On: November 22, 2006

Save Those Invoices! Recent Taxation of Costs Opinion

Save those invoices: costs for using a private process server to serve summonses and subpoenas are taxable as are reasonable costs for copies of trial exhibits. On the other hand, do not expect to recover costs for deposition transcripts where they were only used to prepare witness examinations or "frivolous motions."

In a non-IP case, Judge Robinson recently ruled on a defendant's motion for review of the clerk's taxation of costs: Federal Ins. Co. v. Bear Indus, Inc., C.A. No. 03-251 (D. Del. Nov. 18, 2006) (Robinson, J.). In that case, Bear Industries received a jury verdict in its favor and subsequently moved for taxation of all costs including: (1) costs for serving summonses and subpoenas using a private process server; (2) costs of deposition transcripts; (3) costs for copying admitted trial exhibits. Judge Robinson held that the costs of serving summonses and subpoenas using a private process server are "generally granted as reasonable expenses," and therefore were taxed against the plaintiff. Id. As to the deposition transcripts, although the Local Rule (L.R. 54.1(b)(3)) allows for taxation of such costs where a "substantial portion of the deposition is admitted into evidence at trial or otherwise used in the resolution of a material issues in the case," defendant's use of the transcripts in this case was to prepare for examining witnesses and to draft motions in limine to exclude each other's expert witness. The Court held that the use of the transcripts in preparation for examining a witness is a "routine use" and not one that is directed to resolving a "material issue in the case." Id. at 2. As to their use in preparing their respective motions to exclude, the Court stated that all of these motions were denied and therefore it "was not inclined to reward any party for filing such frivolous motions." Id. Finally, the Court granted costs for copying admitted trial exhibits where the costs were "adequately supported" but declined to grant costs where the defendant failed to show that the time spent and hourly rate charged by the consultant in preparing certain exhibits/demonstratives were reasonable. Id. at 2-3.

Lessons learned: save those invoices and make sure they contain sufficient detail to support the final costs and demonstrate that those costs were reasonable.

Posted On: November 20, 2006

Federal Circuit Rejects Delaware Judge's Non-Enablement Finding

In a decision handed down today, the Federal Circuit has given Impax Laboratories another chance to prove to a Delaware judge that its ANDA application is not hampered by Aventis Pharmaceuticals's patent. The appellate court agreed that Impax had failed to prove inequitable conduct at trial, but found that one of two pieces of prior art may have enabled Aventis's riluzole compound, a drug used to treat ALS (Lou Gehrig's disease). According to the three-judge panel, the district court, by looking only to the effectiveness of the prior art's alleged teaching, failed to fully analyze the question of enablement.

The district court ceased its enablement analysis once it found that the reference, although disclosing riluzole, was only one of many disclosed compounds. Because it was not meaningfully discussed in the prior art, the district court concluded that it could not enable a person of ordinary skill in the art to recognize the value of using riluzole for treating ALS.

Rejecting that finding, the Federal Circuit held that "the effectiveness of the prior art is not relevant." Instead, the Court explained that:

The proper issue is whether the '940 patent is enabling in the sense that it describes the claimed invention sufficiently to enable a person of ordinary skill in the art to carry out the invention . . . . [T]he district court focused only on the former question [of efficacy].

<%media(20061120-Impax.pdf|Impax Labs. Inc. v. Aventis Pharma. Inc., 05-1313 (Fed. Cir. Nov. 20, 2006). )%> The Court therefore vacated the non-enablement finding and remanded for further inquiry into whether the prior art enables one of ordinary skill "to treat ALS with riluzole."

Posted On: November 13, 2006

"Minimal Overlap" Between Infringement and Antitrust Claims Warrants Stay Pending Appeal

The natural corollary to a patentee's right to exclude, at least in infringement litigation, is the prohibition against monopolistic activities. Thus, when facing a claim of infringement, a competitor-turned-defendant often responds with antitrust accusations. That patent litigation often involves claims under the Sherman Act is commonplace. But assuming both these counts will be considered in a single civil action, what should a court do when only one piece of the litigation has gone up on appeal?


District of Delaware Chief Judge Sue L. Robinson has answered that in those circumstances, efficiency and judicial economy dictate. In <%media(20061109-Syngenta.pdf|Monsanto Co. v. Syngenta Seeds Inc.,)%> Monsanto appealed an earlier ruling addressing the infringement portion of the litigation. Monsanto then sought to stay Syngenta's related antitrust claims. The Court, although noting that the interrelatedness of the parties' claims had been contested, ultimately found that the infringement and antitrust issues possessed "minimal overlap."

Given that it had already issued a rule 54(b) certification on the patent side, the Court found that the most efficient - and fair - way to resolve the entire litigation was to stay the antitrust action pending disposition of the appeal.

The implication for practitioners? A plaintiff's request for leave to appeal early will result, judging by the low "minimal overlap" standard, in a stay of a pending counterclaim.

Posted On: November 6, 2006

Kodak Survives Summary Judgment Motion on Obviousness

<%media(20061106-Ampex - Nov 3.pdf|Ampex Corp. v. Eastman Kodak Co.)%>, C.A. No. 04-1373-KAJ (D. Del. Nov. 3, 2006).

Plaintiff Ampex Corp. moved the Court for partial summary judgment that the patent at issue was not invalid (a.k.a. valid) based on several combinations of prior art references. Ampex argued that the proponent of obviousness is required to present an element-by-element comparison of the claims to each prior art reference. The Court, however, found Kodak�s identification of the references in each combination and disclosure of the references� features believed to be relevant to the claim invention sufficient to survive a motion for summary judgment.

Posted On: November 6, 2006

Wyeth Prevails in Discovery Dispute with Impax

Wyeth v. Impax Labs., Inc., C.A. No. 06-222-JJF, 2006 U.S. Dist LEXIS 79761 (D. Del. Oct. 26, 2006).

Upon a motion to compel filed by Impax, Wyeth prevailed on four of five disputes before the Court, losing only its bid to split the cost of imaging relevant documents with Impax. As to Impax�s request that Wyeth produce documents from prior litigation involving the same patents, the Court denied the request as to documents not related to matters at issue in the present litigation because Impax had not shown that the documents were �critical to resolving the issues before the Court.� As to production of documents in their native format (as opposed to TIFF format or PDF format), the Court held that since 1) the parties had not agreed to produce documents with metadata and 2) Impax had shown no particularized need for the documents with metadata, the Court would not force Wyeth to produce the native files with metadata.

Posted On: November 6, 2006

New District of Delaware Filings

10/31/06: Ciba Specialty Chemicals Corp. v. 3V, Inc. (Patent)
11/2/06: Adidas AG and Adidas America, Inc. v. USA Adidas Int'l Group LLC and U.S.A.Adidas.Wandanu Int'l Holdings Ltd. (Trademark)

Posted On: November 3, 2006

Attempt to "Disqualify" Prior Art at Summary Judgment Stage Denied

The drafting of jury instructions is an arduous task, but in a recent opinion, Judge Jordan's ruling makes carefully constructed jury instructions a must for purposes of appeal.

In <%media(20061103-Ampex Kodak (summary judgment prior art) (04-1373-KAJ).pdf|Ampex Corp. v. Eastman Kodak Co)%>., C.A. No. 04-1373 (D. Del. Nov. 2, 2006) (Jordan, J.), Ampex moved for summary judgment that certain pieces of prior art were not in fact "prior art."

The more interesting piece that they sought to preclude was a continuation-in-part patent of a parent application that was filed before the filing date of the patent-in-suit. (The filing date of the continuation-in-part was after the filing date of the patent-in-suit.) During the prosecution of the parent application the Examiner rejected certain claims as not enabled and the applicant responded, not by fixing the claims, but instead by arguing that one of ordinary skill in the art would find the disclosure enabling on this matter. When the Examiner continued his rejection, the applicant abandoned the application and filed a continuation-in-part. Now, in the pending litigation, Kodak is asserting that the prior art date for this patent is the filing date of the parent application because one of ordinary skill in the art would have found at least one issued claim enabled and has an expert to testify to such. (sound familiar?)

The question then becomes…can a defendant take a position that the applicant of the prior art patent abandoned? Definitely an interesting one, with far-reaching implications for invalidity cases. Unfortunately, the Court did not have to take a position one way or the other at this stage because it found a genuine issue of material fact existed sufficient enough for the prior art to go before the jury and therefore denied summary judgment.

The Court did note, however, that "should the completed record indicate that Defendants should not have been permitted to rely on this evidence," the parties should make sure to have a jury verdict form that "poses interrogatories with sufficient specificty to permit an understanding of whether a verdict of invalidity" turned on that disputed piece of prior art. Id. at 6. Once again, demonstrating the importance of carefully worded and detailed jury instructions.

Posted On: November 2, 2006

NetRatings and Coremetrics End Infringement Dispute

Judge Gregory M. Sleet signed a <%media(20061102-(2224701_1)_STIPULATION of Dismissal Stipulation and Order of Dismissal With Prejudice by NetRatings Inc., Coremetrics Inc.. (Keller, Karen).PDF|stipulation of dismissal )%> today that was filed by NetRatings, Inc. and Coremetrics, Inc. dismissing all legal claims with prejudice. The settlement agreement provides Coremetrics, Inc. worldwide rights under all of NetRatings, Inc.'s patents. A copy of the NetRating's press release from October 3, 2006 is attached <%media(20061102-NTRT_Oct3_2006_corp.pdf|here)%>. (C.A. No. 05-314-GMS) Young Conaway Stargatt and Taylor, LLP (Wilmington, DE) and Drier LLP (New York, NY) represented NetRatings, Inc. in the lawsuit and Ashby & Geddes (Wilmington, DE) and Heller Ehrman LLP (Menlo Park, CA)represented Coremetrics, Inc.

Posted On: November 1, 2006

Kodak Prevails on Non-Infringement Defense

Eastman Kodak Co. has prevailed in its defense of a competitor's accusations of infringement involving the company's digital-image technology. A day after denying the company's motion for summary judgment on inequitable conduct, the Delaware court issued an opinion granting Kodak's similar motion on non-infringment. <%media(20061101-Ampex2.pdf|Ampex Corp. v. Eastman Kodak Co., C.A. No. 04-1373-KAJ (D. Del. Oct. 31, 2006) (Jordan, J.).)%>

Ampex brought the infringement claim against Kodak seeking to protect its patented video and image processing technology. See U.S. Patent No. 4,821,121. The Court found that because Kodak's products altered the image data after capture, regardless of whether the image returned to its original state upon storage, the technology could not literally infringe the '121 patent's claims that required complete identity of pixel value at all stages of transmission and storage.

Moreover, because the patentee added the identity requirement in response to the examiner's initial doubts regarding indefiniteness, the Court held that a presumption of prosecution history estoppel applied. Because Ampex failed to rebut this presumption, there could be no infringement under the doctrine of equivalents.

The question now becomes: Will the Court ever reach the issue of validity, as did another Delaware judge facing a similar procedural posture?

Posted On: November 1, 2006

Amazon.com, Inc. and Cendant Corporation Stipulate to Dismissal

Judge Joseph J. Farnan today so ordered two stipulations of dismissal in the patent infringement lawsuits involving Amazon.com, Inc. and Cendant Corporation among others. The stipulations dismissed all claims and counterclaims in their entirety with prejudice. (<%media(20061101-Amazon STIPULATION of Dismissal.pdf|C.A. Nos. 06-41-JJF)%>, <%media(20061101-amazon 2_STIPULATION of Dismissal.PDF|05-414-JJF)%>)