Posted On: November 30, 2007

New Case Filings

11/7: Alcon Manufacturing, Alcon Lab., and Kyowa Hakko Kogyo Ltd. v. Barr Laboratories (patent)
11/9: Aventis Pharma and Sanofi-Aventis v. Hospira, Inc. (patent)
11/14: Arthrocare Corporation v. Gyrus Medical, Inc. (patent)
11/13: Attorney General of the State of Delaware, ex rel. Anheuser-Busch, Incorporated; v. USA Budweiser Beer Group, Inc. (Court of Chancery - trademark)
11/15: Endo Pharmaceuticals Inc. and Penwest Pharmaceuticals Co. v. Impax Laboratories, Inc. (patent)
11/16: Elan Corporation, PLC and Elan Pharma International Ltd. v. Barr Laboratories (patent)
11/16: Weatherwise USA, Inc. and Pittsburgh Tech Licensing Corp v. Weatherbill, Inc. (trademark)
11/20: ITT Manufacturing Enterprises and ITT Corp v. Aquatic Industries, Inc. (trademark)
11/21: Abbott Laboratories v. Banner Pharmacaps, Inc. (patent)
11/27: Boston Scientific Corporation and Boston Scientific SCIMED, Inc. v. Johnson & Johnson, Inc. and Cordis Corp. (patent)
11/28: Arista Records; BMG; Capitol Records; LaFace Records; Maverick Recording Co.; Motown Record Co; Sony BMG ; UMG; Virgin Records; Warner Bros.; and Zomba (copyright)

Posted On: November 30, 2007

Declaratory-Judgment Plaintiff Not "True" Plaintiff Under First-Filed Rule

One party files an infringement action at 12:01 a.m. in New Jersey. Also at 12:01 a.m., the infringement defendant, precluded from lodging its Delaware declaratory-judgment action by a local rule requiring paper filing of complaints, files instead a motion to consolidate the forthcoming declaratory-judgment action with an earlier-filed action. Under the first-filed rule, which action came first, New Jersey or Delaware?

According to Delaware district judge Sue L. Robinson, the question is moot, as the infringement plaintiff's choice of forum should prevail:

"Even if J&J's 12:01 a.m. filing of the first New Jersey action were to be considered the functional equivalent of Abbott's 8:30 a.m. filing of the 07-259 action in this district (and the court declines to find a 'dead heat' in this instance), the winner of this race to the court house is the true plaintiff, not the declaratory judgment plaintiff, as this court respects the choices made by plaintiffs in choosing this state as a forum and must, therefore, respect their choice of a different forum."

In this case — an action "replete with inferences of forum shopping by both parties" — the orchestrated late-night maneuvering came to naught.

Abbott Labs v. Johnson & Johnson, Inc., C.A. Nos. 06-613-SLR, 07-259-SLR, Memo. Op. (D. Del. Nov. 28, 2007).

Posted On: November 29, 2007

Court finds PTO's findings with regard to contractual obligations not controlling

Can a dispute resolution provision in a contract between two parties that states that "any dispute arising out of or relating to patents" shall be resolved through negotiations and mediation and should mediation fail to reach a result, either party may institute legal proceedings "but only in the United States District Court of Delaware, and no other" prohibit a party from filing a request for inter partes reexamination? The Court recently answered yes, despite a finding by the USPTO that such a provision is contrary to public policy and therefore the request for reexamination should be honored.

In Callaway Golf Company v. Acushnet Company, C.A. No. 06-091-SLR, Memo. Opinion (D. Del. Nov. 20, 2007), the defendant had entered into a prior settlement agreement with plaintiff's predecessor-in-interest to resolve certain patent claims. Id. at 3. This agreement contained the language described above. Following two attempts at resolving their dispute via mediation, the defendant filed an inter partes reexamination request for each patent at issue in the lawsuit and then plaintiff subsequently filed the instant lawsuit. Callaway Golf moved for summary judgment for breach of contract and Acushnet moved for summary judgment of no breach of contract.

As a threshold matter, the Court found that because the plaintiff, Callaway was a "successor" as defined by the Agreement and further because the parties had previously engaged in two mediations as required by the Agreement that both parties are bound to the terms of that contract. Id. at 24-25.

Callaway, in addition to its summary judgment motion had also filed a petition with the USPTO to vacate the reexamination that was filed by Acushnet based on the provisions in the Agreement. The PTO dismissed the petition for many reasons including that there was no authority for private parties to abrogate the PTO's statutory jurisdiction and that such a provision would be contrary to public policy. Id. at 26. Judge Robinson held that the Court "owes no deference to the PTO's interpretation of the legal effect of the Agreement or, more generally, the legality of a provision that purports to prevent parties from filing inter partes reexaminations' the PTO was clearly within its jurisdiction to dismiss plaintiff's request to halt the proceedings. It does not follow, however, that defendant was not in breach when it filed its inter partes reexamination request in the first instance." Id.

Ultimately, the Court found that because reexamination was not listed as a possible procedure for resolution of a dispute between the parties (only mediation and litigation in the D. Del. were), it is precluded as a possible remedy for any dispute involving the patents-at-issue. Id. at 27. The Court compares such a provision as "akin to a forum selection clause" as it does not effect either party's interest in adjudicating the validity of the patent it just requires them to do so before a Court instead of the PTO. Id. at 28. Finally, the Court finds that such a holding is not against public policy since: (1) the public is not a party to the Agreement and (2) any third party can still challenge the validity of the patents through a request for reexamination. Id. at 29.

Posted On: November 29, 2007

New District of Delaware Filings

11/20: Roche Diagnostics Operations, Inc. and Corange International Limited v. Abbott Diabetes
Care, Incorporated and Abbott Diabetes Care Sales Corporation, Bayer Healthcare, LLC,
Diagnostics Devices, Inc., Lifescan, Incorporated, Nova Biomedical Corporation and
Sanvita Incorporated (patent infringement)
11/20: The Dial Corporation v. The Procter & Gamble Company (patent declaratory judgment)

Posted On: November 29, 2007

Misrepresentations in Expert Report Lead to Exclusion of Evidence

An expert witness represents in his expert report that he/she "personally directed" testing and that he/she "prepared and tested" the product when in fact the testing was actually done by personnel of the defendant — what happens with the evidence? Based on a recent ruling by Judge Robinson in Callaway Golf Company v. Acushnet Company, C.A. No. 06-091-SLR, Memo. Order (D. Del. Nov. 20, 2007), such evidence should be excluded.


In that case, the defendant submitted an expert report in support of its invalidity contentions in which the expert represented that he personally directed the preparation and testing of the products. At the deposition of that same expert, he testified that it was actually personnel of the defendant that directed the tests, and that he was not involved at all. The Court found that the expert report did not show any "personal knowledge of any material aspect of the subject matter and cannot be used to confer any indicia of trustworthiness to the test results." Id. at 2. Therefore the evidence of such testing was excluded.

Posted On: November 29, 2007

New Claim Construction Opinion

Judge Robinson recently construed the following claim terms in Callaway Golf Company v. Acushnet Co, C.A. No. 06-091-SLR, Memo. Order (D. Del. Nov. 20, 2007):

- "Cover layer having a Shore D hardness"
- "Core"

Posted On: November 12, 2007

New District of Delaware Filings

11/2: Glaxo Group and Smithkline Beecham v. Teva Pharmaceuticals (Patent Infringement)
11/7: Alcon Manufacturing, Alcon Lab., and Kyowa Hakko Kogyo Ltd. V. Barr Laboratories (Patent Infringement)

Posted On: November 8, 2007

New District of Delaware Filings

10/22: Sciele Pharma v. Mylan Pharmaceuticals (Patent Infringement)
10/29: Elan Corp./Pharma v. Actavis (Patent Infringement)
10/29: Innovative Patents and Forcefield v. Brain Pad Inc. (Patent Infringement)
10/30: JSA Technologies v. CBORD Group, Inc. (Patent Infringement)
11/2: Southern Cross Group v. Southern Cross Capital (USA) Inc. (Trademark)

Posted On: November 6, 2007

"Claim Domination" and Double-Patenting

In the statutory double-patenting context, claim domination arises where one patent's claim reads on an invention defined by a more specific claim in another patent. The former dominates the latter because the narrow claim cannot be practiced without infringing the broader claim. Although domination is not per se double-patenting, the doctrine does have its boundaries: a patentee who disclosed ABCXY and claimed ABCX cannot later claim ABCXY beyond the expiration of the patent. This attempt at an extension constitutes double-patenting.

According to district judge Sue L. Robinson, any attempt to meld both tests impermissibly broadens the double-patenting inquiry. In the underlying litigation, the party asserting invalidity contended that double-patenting occurs where the earlier patent discloses and covers the subject matter claimed in the later patent and the evidence reflects that the patentee could have presented the new claims in the earlier prosecution. Or to put it another way: the claims dominate and the patentee already had a chance to claim additional subject matter.

The Court rejected this hybrid test, "unrecognized by any court," on two grounds. First, the test impermissibly adds a new element - opportunity - to the existing precedent, as "only the claims of the patent can be considered as support for a double-patenting rejection." And second, domination alone is insufficient to establish that the two claim sets are "patentably distinct":

[A stipulation that the new claims] cannot be practiced without infringing at least one claim of the [earlier patent] indicates that there is overlapping subject matter; this is not an admission that the sets of claims are not patentably distinct from one another."

Bayer AG v. Dr. Reddy's Labs. Ltd., C.A. No. 04-179-SLR, slip op. at 35-39 (D. Del. Oct. 25, 2007) (Robinson, J.) (quotation formatting altered from original).

Posted On: November 2, 2007

PTO May be Enjoined, But Continuations Still Alive

One day before the Eastern District of Virginia grappled with the PTO's rulemaking authority under 35 U.S.C. § 120, Chief Judge Gregory M. Sleet issued another decision addressing the contours of later-filed applications. In its October 30th decision on invalidity, the Court rejected the assertion that one of several patents in suit could not claim the priority date of a 1988 parent application.

The underlying invention — a food product comprising a mixture of microorganism-based lipids and food material — disclosed a limitation that, according to the Court, matched the written description of the parent application. That the claim in issue and the specification did not mirror one another, however, is not dispositive for purposes of determining priority:

"[T]he court notes that whether a disclosure is limited or broad is of no moment in a written description analysis [under Section 120], as the only requirement of section 112 is for an applicant to provide a description that 'reasonably conveys' to one skilled in the art that the inventor was in possession of what is claimed as of the filing date sought."

While the fate of the PTO's campaign against unlimited filings remains unsettled, the Court here reminded us that the substance behind the later-filed application is secure.

<%media(20071102-Martek.pdf|Martek Biocsciences Corp. v. Nutrinova Inc., C.A. No. 03-896-GMS (D. Del. Oct. 30, 2007) (Sleet, J.).)%>

Martek Biocsciences Corp. v. Nutrinova Inc., C.A. No. 03-896-GMS (D. Del. Oct. 30, 2007) (Sleet, J.)