Posted On: January 29, 2008

Decision Clears Way for Four New Stent Cases to Go Forward

In the ongoing battle between Boston Scientific Corporation, Johnson & Johnson Inc. and Cordis Corporation, the District of Delaware recently handed BSC a victory, allowing it to proceed in four declaratory judgment actions each seeking a judgment on invalidity on one of four patents related to drug-eluting coronary stent technology. Boston Scientific Corporation v. Johnson & Johnson Inc. and Cordis Corporation, C.A. Nos. 07-333-SLR, 07-348-SLR, 07-409-SLR, 07-765-SLR, Memo. Op. (D. Del. Jan. 24, 2008). BSC manufactures a private-labeled version of a stent manufactured by Abbott Laboratories. There are four lawsuits currently pending in the District of New Jersey where Johnson & Johnson asserts infringement of the same four patents at issue in the Delaware litigation, however, the defendant in those cases is Abbott Laboratories.

Johnson & Johnson moved to dismiss all four actions for failure to allege imminent harm necessary for declaratory judgment jurisdiction and also moved to transfer the four cases to the District of New Jersey where its earlier-filed cases are pending.

The Court found that J&J's Jekyll & Hyde jurisdictional argument was not enough to warrant dismissal of the actions. In the District of New Jersey actions, J&J accuses Abbott Laboratories' stent product (identical to that of BSC) of infringing the same patents-in-suit despite the fact that Abbott's product was pending launch in 2008 and was only pending FDA approval. In moving to dismiss the Delaware actions, J&J argued that there could not be declaratory judgment jurisdiction because BSC is not currently marketing or selling the stent (although it has announced its intention to start selling in 2008) and is still awaiting FDA approval. Judge Robinson stated that J&J "can not have it both ways" and therefore denied their motions to dismiss

The Court further denied J&J's motions to transfer the cases to the District of New Jersey where its four earlier filed cases against Abbott are pending. The Court found so, even though the actions pending in the D. N.J. involve the same patents, the same accused products and the same legal issues. Judge Robinson acknowledged that BSC need not have been a party to the earlier filed litigation for the "first-filed" rule to apply, however, in its discretion the prejudice to BSC should the action be transferred was too great. The New Jersey court has yet to set a trial date where the Delaware cases have a trial date and schedule in place so BSC will be able to proceed without delay on its claims. Judge Robinson found J&J's argument on the risk of inconsistent rulings on the legal issues to be "entirely speculative" at this time and therefore not persuasive for transfer. Applying the remainder of the Jumara factors, the Court found that the cases should remain in Delaware.

And the battle rages on…

Posted On: January 28, 2008

Court Finds Patent Claim Invalid For Lack Of An Adequate Written Description

Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., C.A. No. 05-608-MPT (D. Del. Jan. 22, 2007)

Rexam moved for partial summary judgment of invalidity and noninfringement. The Court granted both motions in part. As to noninfringement, the Court held that Rexam did not infringe the claim at issue under the doctrine of equivalants, granting Rexam's noninfringement summary judgment motion. Other noninfringement arguments were denied as moot. As to invalidity, although Rexam asserted several bases for invalidity (including § 102, § 103, lack of adequate written description, and indefiniteness), the Court granted summary judgment only on inadequate written description grounds, mooting the other invalidity bases.

Most of the opinion dealt with the inadequate written description issue, and I will spend the remainder of this post on that issue. Rexam argued that the claim at issue failed to comply with § 112, para. 1 because it did not include the "annular reinforcing bead" limitation contained in the patent's other asserted claims. Section 112, para. 1 requires the specification to "describe the invention sufficiently to convey to a person of skill in the art that the patentee had possession of the claimed invention at the time of the application." Lizardtech v. Regents of Univ. of Cal., 424 F.3d 1336, 1345 (Fed. Cir. 2005). Based on intrinsic evidence, inventor testimony, and expert testimony, the Court found that "[n]owhere is there an indication that the inventors possessed a can end having the other elements of claim 34 of the '875 patent [claim at issue] without also having an annular reinforcing bead." Op. at 13. Thus, the Court held that the specification did not support the broader claim without the "annular reinforcing bead" limitation, and the claim was therefore invalid for failure to comply with the written description requirement.

Let's pause for a moment and consider the analytical framework of this decision. I submit that this decision is correct under Federal Circuit precedent, but this issue – claims broader than the specification – fits more neatly under either the noninfringement or claim scope inquiries. Under the Gentry Gallery decision and its progeny, the Federal Circuit usually (depending on the panel) holds that a feature described in a patent as "essential" or "critical" to the invention must be present in that patent's claims. If such a feature is not present, the claim is invalid for lack of an adequate written description. That is, a claim is invalid if the inventor did not possess the claimed invention, which must contain the essential element, at the time of the application. The Court here, however, also correctly points out that an explicit statement of limitation is not required for the specification to limit the claims. See Op. at fn 46. (Patent prosecutors, of course, almost never describe a feature as the "invention" or "essential to the invention" for just this reason, as well as other reasons related to claim interpretation.) In this case, the patent specification did not describe the annular bead limitation as "essential" or "critical" to the invention; the specification merely failed to mention an embodiment that did not contain the annular bead. In fact, even the abstract of the patent at issue referenced the annular bead limitation. Op. at 6.

Under these circumstances, it seems fair to limit the patentee to embodiments containing the annular bead. After all, even the patent abstract contains the annular bead limitation. It seems strange to me, though, to analyze this issue as one of invalidity for lack of a written description. Before Gentry Gallery, Lizardtech (Op at fn 20), Enzo, and other similar cases, no one would have argued that this issue, claims drafted more broadly than the preferred embodiments, was an inadequate written description problem. You might have argued that the claim scope should be narrowed so as not to include the broader interpretation (claim scope) or that the reverse doctrine of equivalents applied such that the accused product would not infringe (noninfringement). Now, however, after Gentry Gallery and cases like it, we find ourselves in a situation where the Court is forced to determine what the inventor thought of as "essential" or "critical" features to his/her invention at the time of filing, and then strike any claims that do not include these features. It seems to me that this problem would be better dealt with either during the claim construction phase (Limit the scope of the claims based on the specification, being careful not import a limitation from the specification into the claims. This would allow the claims to be interpreted so as to preserve their validity – a canon of claim construction) or during the infringement determination (The reverse doctrine of equivalents, if it still exists, would prevent infringement where the claims are broader than the specification).

What do you think about accused infringers using the written description requirement as a sword in this manner? Should the Federal Circuit overrule Gentry Gallery? Or resurrect the reverse doctrine of equivalents? Please post your comments.

Posted On: January 25, 2008

New District of Delaware Filings

1/15: Tatoo Johnny, Inc. v. Matthew Walker (copyright infringement)
1/17: Validus Pharmaceuticals, Inc. v. Actavis South Atlantic LLC and Actavis, Inc. (patent infringement)
1/17: Applabs, Inc. v. Vocalocity, Inc. (copyright infringement)

Posted On: January 24, 2008

Court Maintains DJ Jurisdiction Over Amazon's Counterclaim in Dispute over i-names and Address Book Information

In the case Cordance Corp. v., Inc., C.A. No. 06-491-MPT, Memo. Order (D. Del. January 22, 2008), Cordance Corp. has alleged that Amazon's trademarked "1-click" technology infringes its patent covering i-name technology. filed a declaratory judgment counterclaim alleging that Cordance's promotion of the i-name services infringes its patent covering software realted to personal address books. Cordance moved to dismiss this counterclaim and the Court subsequently denied the motion. See also posting on 12/04/07: Another "Case or Controversy" Decision Post- "MedImmune". This opinion addresses Cordance's motion for reconsideration and motion for leave to file a reply memorandum including a motion for Fed. R. Civ. P. 11(c) sanctions. Id. at 1.

The Court found that unlike the cases where there is a covenant not to sue and the patent holder abandons the infringement allegations, Amazon is not abandoning its claims here. Furthermore, Cordance has not stopped or agreed to stop all allegedly infringing activities. To divest the Court of declaratory judgment jurisdiction, the Court implies that the cessation of all potentially infringing activities either direct or indirect must be shown. Id. at 5.

Magistrate Judge Thynge further noted that Cordance's attempts in its motion to engage in the court in a facutal and legal analysis of Amazon's counterclaims would not succeed and that her analysis would stick to the issues at hand. Id. at 5.

Posted On: January 24, 2008

New Standing Order Regarding Vacant Judgeship Cases

By Standing Order dated January 23, 2008, all cases assigned to the vacant judgeship prior to August 6, 2007, all cases assigned purusant to the Order of August 6, 2007 (whih assigned civil cases to the Magistrate Judges), and all new cases filed in this District shall be assigned and divided among the three active District Court Judges.

Get a copy of the order here.

The order states as part of the reasons for this change the fact that the vacancy has existed for over one year and it appears that it will continue for some time.

Posted On: January 16, 2008

New District of Delaware Filings

1/9: Riverbed Technology, Inc. v. Quantum Corporation (patent infringement)
1/10: Forest Laboratories, Inc., Forest Laboratories Holdings, Ltd., Merz Pharma GmbH & Co.,
KGaA v. Cobalt Laboratories, Inc. (patent infringement)
1/8: Forest Laboratories, Inc., Forest Laboratories Holdings, Ltd., Merz Pharma GmbH & Co.,
KGaA,. v. Barr Laboratories, Inc. (patent infringement)
1/14: Philip Morris USA v. Taboca USA, Inc. (declaratory judgment - trademark infringement)
1/15: Cryocor, Inc. and AMS Research Corporation v. Cryocath Technologies, Inc. (patent

Posted On: January 11, 2008

Delaware Judge Examines, Then Defers, Separate Patentability Argument

An accused device infringes under the doctrine of equivalents when, among others, the alleged equivalent represents an "insubstantial" change from the claim language. Uncertainty arises, however, when the equivalent is itself patented. Would a finding of equivalence amount to a declaration that the patent covering the accused device is invalid? Perhaps to avoid this outcome, the Federal Circuit has held that a finding of equivalency in this scenario is "considerably more difficult to make out," albeit not necessarily foreclosed.

In a recent opinion, district judge Sue L. Robinson faced, and declined to wade into, this separate patentability issue in the preliminary-injunction context. Acknowledging that the equivalent's patented status is evidence that it was "previously unknown and/or non-obvious," and that customers in the field accepted the interchangeability of the compounds in issue, the Court nonetheless rejected the notion that plaintiff could show a likelihood of success on the merits.

According to the Court, defendant has a "strong argument" that, as a matter of law, the equivalent is both novel and substantially different from the asserted invention. "To the extent that 'known interchangeability' can coexist with separate patentability, plaintiff's burden on its preliminary injunction motion is a heightened one."

Perhaps the result would be different had this been an actual finding on the merits?

Siemens Medical Solutions USA Inc. v. Saint-Gobain Ceramics & Plastics Inc., C.A. No. 07-190-SLR (D. Del. Jan. 8, 2008) (Robinson, J.).

Posted On: January 8, 2008

Objective Recklessness: Failure to Obtain Advice of Counsel is Relevant to Willfulness Inquiry

After the Federal Circuit released its Seagate decision, Patently-O asked a fair question: "What role, if any, is there for the thick, formal opinions explaining in detail why a particular patent is invalid, unenforceable, and/or not infringed?"

A recent decision by District of Delaware Chief Judge Gregory M. Sleet goes a long way in answering that question in this district. In its January 4th order, the Court stated that while Seagate "does effect a change in the standard for willfulness . . . it does not inform the totality of circumstances analysis for the objective recklessness standard . . . ." Therefore, "nothing in Seagate forbids a jury to consider whether a defendant obtained advice of counsel as part of the totality of the circumstances in determining willfulness."

As a result, the Court allowed the evidence of defendants' failure to obtain advice of counsel.

Energy Transportation Group Inc. v. William Demant Holding A/S, C.A. No. 05-422-GMS (D. Del. Jan. 4, 2008) (Sleet, C.J.).

Posted On: January 2, 2008

New District of Delaware Filings

12/21: Fifth Market, Inc. v. Board of Trade of the City of Chicago, Inc. (patent infringement)
12/21: Samsung Electronics Co., Ltd. v. Sharp Corporation et. al. (patent infringement)
12/26: Wall Corporation v. BondDesk Group, L.L.C., and BondDesk Trading, L.L.C. (patent infringement)

Posted On: January 2, 2008

Summary Judgment Granted in Beverage Can Case

On December 21, 2007, Magistrate Thynge granted summary judgment to Reexam Beverage Co. finding that two claims of US Patent No. 5,697,242 were infringed. Crown Packaging Tech. Inc. v. Reexam Beverage Can Co., C.A. No. 05-608-MPT, Memo. Order (D. Del. Dec. 21, 2007). The patent-at-issue involved methods for "reforming the bottom of a can body or can base" to make the can stronger while using less metal. Id. at 3. The Court found that Crown's technical drawings, physical can samples and testimony of its witnesses demonstrated infringement of two claims of the patent-in-suit.