Posted On: October 26, 2007

Mapping Antitrust Remedies in the District of Delaware

Ever since the early seventeenth century, when Lord Coke condemned a playing-card patent for reducing those in the subject trade to "idleness and beggary," the judiciary has been charged with discerning the line between property rights and monopoly. So for patent practitioners, an antitrust decision, even if outside Title 35's domain, is worth noting. Delaware District Judge Sue L. Robinson recently issued such an opinion, providing authority on private antitrust remedies, personal jurisdiction, and venue.

The Court began by rejecting the assertion that an earlier finding of competitive harm in favor of the government necessarily meant that a later private plaintiff also established the requisite injury in the same market. According to the Court, this collateral estoppel argument "impermissibly combines the concepts of causation and injury." In the absence of proof of an injury in fact, there is no avenue by which the Court could "infer that a finding of anticompetitive effects necessarily implies a finding that consumers . . . have been hurt." Relatedly, the Court also questioned the need for a private injunction in addition to one the government had already obtained: "Clearly any [class member] can notify the government of any further antitrust violations by [defendant], regardless of the status of the instant private litigation."

Evaluating several personal-jurisdiction motions, the Court also rejected the claim that "personal jurisdiction in federal antitrust litigation is assessed on the basis of a defendant's aggregate contacts with the United States as a whole." Noting Third Circuit precedent, the Court held that the "national contacts" test applies only to foreign parties. The Court's grasp over a domestic entity is instead determined, as in most other cases, by "traditional long-arm jurisprudence." On the question of venue, however, the Court declined to apply the general venue statute, opting instead for the narrower antitrust provision: "[S]ection 12 of the Clayton Act may not be supplemented with the general venue provisions . . . for purposes of establishing venue for domestic defendants, and must be considered independently of those provisions."

Although the battleground may have now shifted to the Federal Rules of Civil Procedure, among others, the discourse on competition provoked by the Lord Chief Justice perseveres.

Howard Hess Dental Labs. Inc. v. Dentsply Int'l Inc., C.A. No. 99-255-SLR (D. Del. Sept. 26, 2007) (Robinson, J.)

See also Darcy v. Allein, (1603) 77 Eng. Rep. 1260 (K.B.).

Posted On: October 25, 2007

The Battle Rages On…

In the ongoing battle between Cordis Corporation and Boston Scientific Corporation over stent technology, the District of Delaware recently upheld two jury verdicts while denying Cordis' motion for judgment as a matter of law and motion for a new trial. Cordis Corp. v. Boston Scientific Corp., et al., C.A. Nos. 03-027-SLR, 03-283-SLR, Memorandum Order (D. Del. Sept. 24, 2007).

In June 2005, two separate juries found that various Cordis stents infringe certain claims of two BSC patents. (BSC was also found to infringe certain Cordis patents although this is not relevant to the pending motions and therefore I have not described it in detail.) While the District of Delaware case was pending, the inventor on one of the patents-in-suit filed a separate lawsuit in California relating to an assignment agreement with BSC over one of the patents. As part of that litigation, the California court was required to construe the claims of one of the patents. Cordis now argues that it is entitled to a judgment of non-infringement as a matter of law based on the claim construction argued by BSC in California and ultimately adopted by the court. Judge Robinson acknowledged that the court may revise its "interlocutory" claim construction ruling at any time prior to entry of judgment but refused to do so here. The Court noted that Cordis, significantly, failed to present this claim construction dispute to the the Court prior to this motion as critical to its non-infringement defense.

Cordis also moved for a new trial based on an announcement by the FDA over a year after the jury verdict which, Cordis argued, proved its one stent is "non-thrombogenic" and therefore could not infringe. The Court held that this FDA announcement was not conclusive and only identified a risk that could possibly be due to stent thrombosis. This "speculative" evidence was not enought ot dismiss the case or grant a new trial.

The battle continues…(but not for a while in these cases…as part of this order the Court ruled that it will not entertain any additional motions in these cases until the Federal Circuit issues its decision)

Posted On: October 24, 2007

Magistrate Thynge Broadens Discovery Guidelines in Revised Form Scheduling Order

Magistrate Judge Mary Pat Thynge recently broadened the Court's discovery-dispute procedure. As of October 22, all discovery matters, rather than "disputes," must follow the letter-briefing schedule set out in the Court's revised form scheduling order). As demonstrated in a recent order, requests for extensions of discovery deadlines fall within the definition of "discovery matters," and therefore must adhere to the Court's guidelines.

Roquette Freres v. SPI Pharma Inc., C.A. No. 06-540-*** (D. Del. Oct. 17, 2007) (Thynge, M.J.).

Posted On: October 23, 2007

Disagreement Of Experts Enough To Preclude Summary Judgment In Beverage Can Patent Dispute

Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., C.A. No. 05-608-MPT (D. Del. Oct. 5, 2007).

In this chapter of the beverage can patent dispute between the parties, Magistrate Judge Thynge denied Crown's motion for summary judgment of patent invalidity. Crown argued that certain asserted claims are invalid under § 102(g)(2) by a prior process practiced by the Ball Corporation. Rexam argued that the Ball process was not prior art because the claims at issue claim priority from a PCT application with a priority date predating the reduction to practice of the Ball process. (Still with me? If not, re-read the last sentence.) Each side's respective experts disagreed (imagine that!) over whether one of ordinary skill in the art would understand the PCT application to inherently disclose "radial movement of the reforming roller," a limitation present in the asserted claims. If the "radial movement" limitation is not found (either expressly or inherently) in the PCT application, then the patentee cannot rely on the PCT application's priority date. Due to this disagreement between the experts about whether a person of ordinary skill in the art would understand the PCT application to inherently disclose the "radial movement," the Court denied the motion for summary judgment.

Posted On: October 19, 2007

To Be Dependent, Claim Must Incorporate Process, Not Product, of Referent Claim

Dependent claims necessarily refer back to an earlier, separate claim. But what happens when one claim describes a one-step process that is in turn obtained by the process of another claim? According to the Federal Circuit, the reference to the earlier claim's process ensures a finding of dependency.

In affirming a claim construction decision (among others) of Delaware District Judge Sue L. Robinson, the Federal Circuit began with the language of the process claim in issue: "A process comprising obtaining progeny from a [certain plant] obtained by the process of claim 1 . . . ."

Finding this language sufficient to warrant dependent status, the Court rejected the contention that the claim was independent because it is "by itself" a single-step process. By doing so, the Court relied on the claim's explicit reference to the independent claim's process:

"[C]laim 4 clearly references another claim, not simply a starting material. The claim might have used express language to clarify that it only invoked the product of the process in claim 1 as a starting material, but did not do so. Instead, the claim language reads claim 1 into claim 4."

Thus, the recitation of another claim's process, rather than its product, confers dependent status on the reciting claim.

Monsanto Co. v. Syngenta Seeds, Inc., No. 2006-1472 (Fed. Cir. Oct. 4, 2007) (Rader, J.).

Posted On: October 18, 2007

No preclusion for subsequent infringement action…

Following Federal Circuit precedent, Chief Judge G. Sleet recently found that non-merits based dismissal of a patent claim in one action does not preclude the plaintiff from bringing that same claim in a subsequent infringement action. Abbott Diabetes Care, Inc. v. Dexcom, Inc., C.A. No. 06-514-GMS (D. Del. Sept. 30, 2007). Abbott previously filed an amended complaint in an earlier action between the same parties looking to add three more patents to that lawsuit. Dexcom filed, and the Court granted, a motion to strike this amended complaint for failure to comply with the requirements of Fed. R. Civ. P. 15(d). Abbott then brought a new action alleging infringement of those three patents and Dexcom again moved to strike. The Court found that because its earlier decision did not reach the merits of those patent claims each of those patent claims now raises a distinct cause of action and therefore is not duplicative of the complaint in the earlier action. Id. at 6. The Court did, however, consolidate this new case with the earlier filed litigation as the technologies at issue in each case are similar, the same device is accused of infringement in both cases and Abbott admitted in papers filed in the earlier litigation that any new case would likely be consolidated with the prior litigation. Finally, the Court agreed to stay the case pending reexamination of all patents-in-suit (including the ones in the prior litigation) where the Rule 16 scheduling conference had not yet occurred, no scheduling order was in place and no discovery had begun. The stay would further simplify issues for trial. Id. at 8-9.

Of particular note regarding the local rules… Both parties filed additional letters after complete briefing on the pending motions. The Court disregarded these letters in making its ruling as failing to comply with D. Del. LR 7.1.2(b) which only allows the filing of additional papers where there is a need to cite subsequent authorities. Id. at 2 n.1.

Posted On: October 17, 2007

The Foreign Patent-Agent Privilege in the District of Delaware

In the late 1990s, a New York district court recognized the foreign "patent-agent privilege," which provides that "if a communication with a foreign patent agent involves a foreign patent application, then as a matter of comity, the law of that foreign country is considered regarding whether that law provides a privilege comparable to the attorney/client privilege." Nearly ten years later, the District of Delaware faced a similar question: whether, under French law, the patent-agent privilege is broad enough to extend to a special category of French patent agents.

Answering no, Magistrate Judge Thynge settled one of the rarer privilege disputes in this district.

In the underlying case, Defendant Samsung sought communications between Plaintiff CEA and the French patent agents that assisted CEA in prosecuting several French patents related to the patents-in-suit. Raising the patent-agent privilege, CEA opposed, claiming that its patent agents were entitled to assert privilege under a French professional-association regulation. When Samsung countered that a 2004 statute enacted by the French Parliament mooted the 2002 regulation, and therefore removed the agents' ability to assert privilege, the Court faced the task of engaging in French statutory interpretation. Ultimately, the Court sided with Samsung: "CEA's argument requires the court read into the 2004 statute an exception, the effect of which would be to modify the 2004 statute by the prior decree."

The result? The patent-agent privilege does not apply in this context and the French documents must be produced. The question of whether the foreign patent-agent privilege can be successfully asserted in this district must therefore wait another day.

Commissariat A L'Energie Atomique v. Samsung, C.A. No. 03-484-MPT (D. Del. Oct. 16, 2007) (Thynge, M.J.).

Posted On: October 2, 2007

New District of Delaware Filings

9/24: Flash Seats, LLC v. Paciolan (patent infringement)