Posted On: March 18, 2009

Judge Joseph J. Farnan: 271(e)(2) -- Not a Jurisdictional Statute

Section 271(e)(2) is the well known provision of the Patent Act that creates an artificial act of infringment by the filing of an ANDA with the FDA. This statute is the means by which a "case or controversy" arises so that the ANDA filer or a patentee can initiate suit regarding invalidity or infringement. But are the elements of Section 271 intended to be jurisdictional prerequisites?

Judge Farnan recently overruled defendants' objection and adopted a decision by Magistrate Judge Stark where Judge Stark applied Rule 12(b)(6) standards to a motion to dismiss an infringment action brought pursuant to 35 U.S.C. 271(e)(2). AstraZeneca Pharmaceuticals LP v. Aurobindo Pharma Ltd., C.A. No. 07-810-JJF-LPS, MDL No. 08-1949-JJF-LPS, Memo. Op. (D. Del. Feb. 25, 2009). The Court found that Judge Stark did not err in his application of Rule 12(b)(6) because the elements of Section 271(e)(2) are not jurisdictional but instead "subject matter jurisdiction over a Section 271(e)(2) claims still flows from 28 U.S.C. 1338(a)." Id. at 5.

AstraZeneca Pharmaceuticals LP v. Aurobindo Pharma Ltd., C.A. No. 07-810-JJF-LPS, MDL No. 08-1949-JJF-LPS, Memo. Op. (D. Del. Feb. 25, 2009).

Posted On: March 18, 2009

New District of Delaware Intellectual Property Filings

2/19: Flashpoint Technology, Inc. v. Aiptek, Inc., Argus Camera Co., LLC, Bushnell Inc., DXG Technology USA, Inc., DXG Technology Corp., Leica Camera AG, Leica Camera, Inc., Minox GMBH, Minox USA, Inc., Oregon Scientific, Inc., Ritz Interative, Inc., Ritz Camera CEnters, Inc., Sakar International, Inc., D/B/A Digital Concepts, Tabata U.S.A., Inc., Target Corp., VistaQuest Corp., VuPoint Solutions, Inc., Walgreen Co., and Wal-Mart Stores, Inc. (patent infringement)
2/20: British Telecommunications plc v. Freescale Semiconductor Inc. (patent infringement)
2/24: Arendi Holding Ltd. v. Microsoft Corp. and Dell Inc. (patent infringement)
2/27: Millennium Pharmaceuticals Inc. v. Teva Parenteral Medicines, Inc. and Teva Pharmaceuticals USA, Inc. (patent infringement)
3/3: Achushnet Company v. Callaway Golf Company (patent infringement)
3/3: Callaway Golf Company v. Acushnet Company (patent infringement)
3/4: Masonite Corporation v. Jeld-Wen, Inc. (patent infringement)
3/4: Procter & Gamble Co. and Hoffmann-La Roche Inc. v. Apotex Inc. and Apotex Corp. (patent infringement)
3/5: Joseph Neev v. Abbott Medical Optics, Inc. and Rainforest Acquisition, Inc. (patent infringement)
3/5: Genzyme Corporation v. Lupin Ltd. and Lupin Pharmaceuticals, Inc. (patent infringement)
3/10: Xpertuniverse, Inc. v. Cisco Systems, Inc. (patent infringement)
3/12: Wyeth v. Intervet, Inc. d/b/a Intervet/Schering-Plough Animal Health and Boehringer Ingelheim Vetmedica, Inc. (patent infringement)
3/12: Netlist, Inc. v. MetaRAM, Inc. (patent infringement)
3/13: Stiefel Laboratories, Inc. and Stiefel Research Australia Pty Ltd. v. Cobrek Pharmaceuticals, Inc. and Perrigo Company (patent infringement)
3/13: Abbott Laboratories v. Matrix Laboratories, Inc., Matrix Laboratories Ltd. and Mylan, Inc. (patent infringement)

Posted On: March 11, 2009

Delaware FBA Chapter Hosts Legal Ethics Progam

Continuing its federal-practitioner CLE series, the Delaware chapter of the Federal Bar Association hosted an engaging and challenging program on legal ethics this afternoon in Wilmington. Following a luncheon at the Hotel du Pont with the district judges, the event began with an interactive (read: Socratic) presentation by two experts in the field: Susan Martyn, a professor at the University of Toledo College of Law, and Lawrence J. Fox, a partner with Drinker Biddle & Reath, LLP, in Philadelphia. The afternoon concluded with a roundtable discussion of ethics in the District of Delaware led by district judge Joseph J. Farnan Jr., district judge Sue L. Robinson, and magistrate judge Leonard P. Stark.

Our thanks to Susan, Larry, and the Court for putting together a successful and enjoyable FBA event.

Posted On: March 10, 2009

Sue L. Robinson: Motion to Amend Not Futile When "Substantive Dispute" Present

Last week, District Judge Sue L. Robinson rejected a party's attempt to stave off a timely motion to amend on the grounds of futility:

"I generally reject such futility arguments if they present substantive disputes, either of the law or of the facts. In other words, if matters are pleaded consistent with Rules 8 and 9(b) of the Federal Rules of Civil Procedure, the substantive merits of allegations made in either an amended complaint or an amended answer should be tested through a substantive motion (pursuant to, e.g., Rules 12(b)(6) or 56), not a procedural one."

In the underlying litigation, the defendant's government-use defense "clearly presents issues of fact and law" that are not appropriate for resolution "in this procedural posture."

JP Morgan Chase & Co. v. Affilliated Computer Services Inc., C.A. No. 08-189-SLR (D. Del. Mar. 4, 2009) (Robinson, J.).

Posted On: March 5, 2009

Sue L. Robinson: Materiality of Foreign Declaration Questioned

Under the PTO's patent-examining manual, applicants "have a duty to bring to the attention of the Office any material prior art or other information cited or brought to their attention in any related foreign application." According to yesterday's decision by district judge Sue L. Robinson, however, this duty is tempered by the materiality standard:

"The question remains, how material is a declaration disclosed in foreign patent proceedings, where neither the declarant nor the testing has not been vetted through the discovery process and where the declaration was not ultimately sufficient to invalidate the European counterpart?"

Answering in the negative, the Court found that "such a declaration is not material and, therefore, irrelevant . . . ."

Takeda Pharma. Co. Ltd. v. Teva Pharma. USA Inc., C.A. No. 07-331-SLR (D. Del. Mar. 4, 2009) (Robinson, J.).