Posted On: July 27, 2007

New District of Delaware Filings

7/20: Cancer Research Technology Ltd. and Schering Corporation v. Barr Laboratories, Inc. and Barr Pharmaceuticals, Inc. (patent infringement)
7/23: Inovis USA, Inc. v. Distance Digital Co., LLC and Classified Information, Inc. (declaratory judgment of non-infringement, invalidity and unenforceability)
7/24: Black & Decker, Inc. and Black & Decker (U.S.) Inc. v. Makita U.S.A. Inc. and Makita Corporation (patent infringement)
7/25: QVC, Inc. and Er Marks, Inc. v. Joshua Barker, Jason Jersey and Jersey-Barker Enterprises (trademark infringement)

Posted On: July 26, 2007

Delaware Judge Examines Enablement in Anticipation Context

In a recent decision on remand from the Federal Circuit, District of Delaware Judge Farnan considered whether, as part of an anticipation inquiry, an earlier patent enabled one skilled in the underlying art to practice the procedure claimed in the patent in suit. Answering no, the Court added new context to the continuing dialogue in the courts about settling the meaning of the phrase "ordinary skill in the art."

The prior art patent in this drug case embraced "hundreds to thousands" of compounds that could be used to treat a variety of medical conditions. The patent in suit, by contrast, claimed a specific compound - riluzole - for the treatment of one condition - ALS. Although the prior art mentioned riluzole, it did so only for the purposes of synthesizing other compounds or to exclude it altogether. The Court therefore concluded that, amidst the disclosure of so many other compounds and conditions, the prior art patent failed to put one skilled in the treatment of ALS "in possession" of the claimed invention in the patent in suit. The Court also held that, as a matter of law, the experimentation necessary to uncover the riluzole-ALS link would be too great. Accordingly, the prior art patent could not be enabling for anticipation purposes.

Many topics in patent law require courts and litigants to decipher the meaning of "ordinary skill." If anything, the term has assumed added significance since the Supreme Court's obviousness decision in KSR. A bright line to take from the present case: one of ordinary skill would not think to practice a particular invention without some transparent and undisguised prompting from the prior art in question. Only one of extraordinary skill in the art would do that.

Impax Labs. Inc. v. Aventis Pharma. Inc., C.A. No. 02-581-JJF (D. Del. July 19, 2007) (Farnan, J.).

Posted On: July 26, 2007

Are Juries Up to the "Monumental Task" of Deciding Patent Cases?

Is a single jury equipped to consider competing expert testimony on reasonable royalty damages? Thankfully, a District of Delaware judge has answered in the affirmative. Much has been made in recent years about the American jury's ability to comprehend, digest, and assess the evidence in complex civil litigation, most notably in patent cases. By denying a plaintiff's motion to bifurcate, Magistrate Thynge has implicitly reaffirmed the vitality of the lay factfinder's role in patent litigation.

The Court rejected, among other reasons, plaintiff's claims of "jury incompetence" on the issue of reasonable royalty damages. By doing so, the Court noted plaintiff's curious argument: "Crown offer[ed] that its experts have calculated a different royalty rate than [defendant's experts], and therefore, Crown would be prejudiced by the introduction of [defendant's] evidence on that issue." Declining to accept plaintiff's protestations that one jury could not undertake such a "monumental task," the Court denied the request for bifurcation.

In a world awash with proposals for specialized patent courts and other devices foreign to the common law, it is reassuring to know that the institution of the jury, a staple of all civil litigation, no matter how complex, retains the confidence of the judicial branch.

Crown Packaging Tech. Inc. v. Rexam Beverage Can Co., C.A. No. 05-608-MPT (July 24, 2007) (Thynge, M.J.).

Posted On: July 25, 2007

First-to-File Rule Does not Require Exact Identity of the Parties

In the recent Time Warner Cable, Inc. v. GPNE Corp. decision by the District of Delaware, Magistrate Judge Thynge found that Third Circuit law does not "specifically require the exact identity of the parties" when applying the first-to-file rule. C.A. No. 07-67-MPT, Memorandum Op. (D. Del. July 20, 2007). In Time Warner, the defendant, GPNE, had originally filed a patent infringement case in the Eastern District of Texas against Time Warner, Inc. and various other parties. Two days later, Time Warner Cable, Inc. filed a declaratory judgment action in the District of Delaware of non-infringement and invalidity of the patent that was asserted in the Texas litigation. The basis for declaratory judgment jurisdiction as alleged by Time Warner Cable, Inc. was that GPNE intended to include it in the Texas litigation as a defendant and therefore that would impact its business activities. Time Warner Cable, Inc. and Time Warner, Inc. are two separate entities (with Time Warner, Inc. owning 84% of Time Warner Cable, Inc.). Id. at 4. Subsequently, GPNE did amend its complaint in the Texas litigation to include Time Warner Cable as a defendant and moved to transfer the Delaware case to Texas.

The Court found that chronologically, GPNE was the "first-to-file" and because the Delaware case involves the same facts and the same patent the first-to-file rule will apply, despite the fact that Time Warner Cable was not originally a party to that first-filed action. Therefore, the Delaware case was dismissed and GPNE's motion to transfer or stay was denied as moot.

In dicta, the Court made some interesting notes on forum shopping. Time Warner Cable had alleged that GPNE's filing of the Texas action was forum shopping because it is a favorable jurisdiction for plaintiffs. The Court found no evidence that GPNE chose to litigate in Texas in "bad faith". Id. at 10. The Court did, however, note that Time Warner Cable, Inc.'s decision to file suit in Delaware could be considered an example of forum shopping because it was filed in anticipation of them being added as a defendant to the Texas litigation.

Once again it just proves the old adage…timing is everything…

Posted On: July 20, 2007

New District of Delaware Filings

7/16: Rates Technologies, Inc. v. Primus Telecommunications Inc. and Primus Telecommunications Group, Inc. (patent infringement)
7/16: Rates Technologies, Inc. v. Qwest Communications, Co., Qwest Communications International Inc., Qwest Corporation and Qwest Services Corporation (patent infringement)
7/19: Comcast Cable Holdings, LLC v. Ronald A. Katz Technologies Licensing L.P. (breach of contract and declaratory judgment)

Posted On: July 20, 2007

Advice-of-Counsel Defense Not a "True" Affirmative Defense Under Rule 8(c)

Federal Rule of Civil Procedure 8(c) catalogues a list of affirmative defenses that an answering party must plead. The rule also requires, without elaboration, that the party assert "any other matter constituting an avoidance or affirmative defense." In patent litigation, one defense to a charge of willful infringement is the so-called "advice of counsel" defense. The question, then, is whether this defense must be pleaded affirmatively. The answer, according to a recent decision by district judge Joseph J. Farnan, Jr., is "no."

Responding to a discovery dispute in the underlying infringement litigation, the Court acknowledged the downside to holding that, at least in the willful infringement context, the advice-of-counsel defense falls within the ambit of Rule 8(c). In particular, the Court cautioned that a party's reliance on the advice of counsel is only one factor in evaluating willfulness and that "treating advice of counsel as an affirmative defense . . . risks weakening and/or shifting the burden of proof to the accused infringer," an outcome contrary to established Federal Circuit precedent.

According to the Court, a genuine affirmative defense "rais[es] new facts and arguments that, if true, will defeat the plaintiff's . . . claim, even if all allegations in the complaint are true." By contrast, a defense that simply "negates some element of plaintiff's prima facie case" falls outside the scope of Rule 8(c).

Weighing these standards, the Court held that the defense of advice of counsel "does not entail admitting the allegations of the plaintiff's complaint and does not alone overcome a plaintiff's claim of willful infringment." Thus:

"[A]dvice of counsel is only an 'affirmative defense' in the sense that it must be introduced into the litigation by the accused infringer in mitigation of a claim of willfulness; it is not a 'true' or 'mandatory' affirmative defense under Rule 8(c) that must be pled in the answer."

In the continuing dialogue over how and when to preserve the accused infringer's attorney-client privilege while also recognizing that party's ability to maintain a defense, this decision helps shed light on the still evolving contours of the willfulness defense.

LG.Philips LCD Co. Ltd. v. Tatung Co., C.A. No. 04-343-JJF (July 13, 2007) (Farnan, J.).

Posted On: July 19, 2007

Reform Debate Extends to Claim Construction

Claim construction follows a well trodden path through a patent's prosecution history, specification, and, most importantly, the language of the claims. Who knew that the process could also implicate the ongoing debate over the fairness and stability of the current patent regime?

Consider, for example, a recent dissent authored by Federal Circuit Senior Judge Plager in a case affirming District of Delaware Magistrate Judge Mary Pat Thynge:

"Fair notice to the public, and to competitors, of what is claimed depends on our holding patentees to what they claim, not to what they might have claimed. It is the responsibility of those who seek the benefits of the patent system to draft claims that are clear and understandable. When courts fail to enforce that responsibility in a meaningful way they inevitably contribute an additional element of indeterminacy to the system. Sometimes being kind to a party results in being unkind to the larger interests of the society."

Honewell Int'l Inc. v. Universal Avionics Sys. Corp., No. 2006-1406 (Fed. Cir. July 3, 2007).

Posted On: July 17, 2007

Chief Judge Sleet Decides The Proper Scope Of Issues Before The Court On An Interference Appeal

Illinois Tool Works Inc. v. Frito-Lay N.A., Inc., C.A. No. 06-54 GMS (D. Del. July 9, 2007).

Illinois Tool Works (ITW) appealed the decision of the Board of Patent Appeals and Interferences to the Delaware district court pursuant to 35 U.S.C. § 146. The interference was between the Jurgoven patent (assigned to Frito-Lay), an application submitted by Jurgoven, and an application by Ramsey (assigned to ITW). The subject matter of the patent/applications and the two counts of the interference was a zippered flexible food product package that is pinch-grip openable, and the method of opening and closing the package. The Board found in favor of Frito-Lay, awarding it priority of invention because ITW had derived its invention from the Jurgoven patent. The Board declined to rule on the patentability of the Jurgoven patent "because ITW did not file a timely preliminary motion on the issue." Op. at 3.

The issue before the Court was whether the Court should consider the patentability of the Jurgoven patent even though the issue was not raised at the proper time before the Board. ITW did not raise the patentability issue in the early phases of the interference, instead waiting until its briefing before the Board to raise the issue. Frito-Lay argued that this amounted to a waiver of the patentability issue by ITW such that the patentability issue was not properly before the Court. The Court disagreed. The Court held that although ITW did not raise the patentability issue through the proper procedural vehicle before the Board (a preliminary motion), "the record clearly demonstrates that ITW raised the issue with the Board during the judgment motion phase of the interference and insisted that it be resolved during the interference." Op. at 5. Thus, the Court ruled that the patentability issue is properly before the Court, but only as to the prior art argued before the Board – ITW may not raise new patentability arguments at this time. Op. at 8.

Posted On: July 13, 2007

New District of Delaware Filings

Sepracor Inc. v. Barr Laboratories Inc. (patent infringement)
Boehringer Ingelheim Pharma GmbH & Co. KG, Dr. Karl Thomae GmbH, Boehringer Ingelheim International GMBH and Boehringer Ingelheim Pharmaceuticals Inc. v. Barr Laboratories Inc. and Barr Pharmaceuticals Inc. (patent infringement)

Posted On: July 5, 2007

New District of Delaware Cases

6/28: Purdue Pharma Products L.P., Napp Pharmaceutical Group Ltd., Biovail Laboratories International, SRL and Ortho-McNeil, Inc. v. Par Pharmaceutical, Inc. and Par Pharmaceutical Companies, Inc. (patent infringement)
6/28: Papst Licensing GMBH & Co. KG v. Olympus Corporation, Olympus Imaging America, Inc. (patent infringement)

Posted On: July 5, 2007

New Local Rules (Civil) Effective June 30, 2007

For a copy of the newly revised Local Rules, click here Many thanks to Judge Robinson for leading the revision effort.