Posted On: October 30, 2009

Judge Farnan: Another Motion to Transfer Denied

In Personalized User Model LLP v. Google, Inc., C.A. No. 09-525-JJF (D. Del. Oct. 27, 2009), Judge Farnan issued an opinion on a motion by defendant Google to transfer a pending patent infringement suit to the Norther District of California (its home state) under 28 U.S.C. § 1404(a).

The opinion implicitly criticized the current state of Third Circuit law on § 1404(a) motions to transfer. According to the Court, "1404(a) is not complicated," and lays out three "simple, straightforward principles." Id. at 2. But "[i]n the Third Circuit, district courts are required to analyze and weigh a set of eleven (11) private/public factors." Id. The Court analyzed each of the 11 factors, listing in four pages of tables each party's arguments and the Court's conclusions. The Court ultimately denied the motion to transfer under the 11 factors, noting that "[i]nterestingly, the Court would reach the same conclusion by applying the three principles of Section 1404(a) without the enhanced analysis required by the eleven private/public factors of the case law." Id. at 7-8.

Denial of the motion to transfer is unsurprising, since the Delaware District Court denies most transfers anyway (except in the case of regional defendants or first filed cases).

As it has in the past, the Court rejected arguments regarding the location of witnesses and documents. Id. at 4, 6. Among the Court's findings on each of the 11 factors, the Court noted that "[t]here are no significant public efficiency" or "public policy" differences between the District of Delaware and the Northern District of California, and that "[p]atent cases are national cases and seldom open to a local interest analysis." Id. at 6-7. The Court made no indication that it plans to start granting motions to transfer any time soon; when a patent plaintiff files a case in Delaware, it stays in Delaware.

Personalized User Model LLP v. Google, Inc., C.A. No. 09-525-JJF (D. Del. Oct. 27, 2009)

Posted On: October 28, 2009

Judge Robreno: Memorandum Opinion on Discovery Issues

Eastern District of Pennsylvania Judge Eduardo C. Robreno, sitting by designation, recently issued a memorandum opinion addressing discovery issues in Inventio AG v. Thyssenkrupp Elevator Americas Corporation et al., C.A. No. 08-874-ECR (D. Del. Oct. 8, 2009). Defendant moved to compel production of two categories of documents: letters and deposition transcripts from plaintiff's pending S.D.N.Y infringement case on a related patent, and "all nonprivileged documents contained in [plaintiff's] internal patent prosecution files with respect to the patents-in-suit." Id. at 1-2.

As to the first request, Judge Robreno determined that the documents from the S.D.N.Y. suit, although mostly relevant, were covered under a stipulated protective order and that "this Court is without authority to alter the Protective Ordered entered by another court by ordering production of any documents within [its] scope." Id. at 18. The court did, however, order plaintiff to identify the protected documents in a privilege log and, after the court determines which documents are relevant, to return before the judge in the S.D.N.Y. action and seek relief from the protective order as to those documents. Id. at 18-19.

As to the second request, seeking all of the plaintiff's internal patent prosecution documents, Judge Robreno held that the only ground under which plaintiff could withhold the documents is privilege, and that privilege must be claimed on a document-by-document basis rather than plaintiff's "blanket statement" that all internal patent prosecution documents are non-discoverable. Id. at 20.

Judge Robreno also included an interesting explanation of the scope of discovery under Rule 26. He analogized the types of information discoverable under Rule 26 to "three concentric circles," because parties must disclose first "information integral to the litigation . . . without the necessity of a discovery request," FRCP 26(a), then "nonprivileged information that is 'relevant to any party's claim or defense' upon a request," FRCP 26(b)(1), and finally "broader discovery of 'any matter relevant to the subject matter involved in the action,' where such information is likely to lead to the discovery of admissible evidence and the party making the discovery request can establish 'good cause' to support the request." Id. at 7-9 (hyperlink added). As far as I can tell from a brief Lexis search, this apt analogy is unique to this memorandum opinion.

Inventio AG v. Thyssenkrupp Elevator Americas Corporation et al., C.A. No. 08-874-ECR (D. Del. Oct. 8, 2009)

Posted On: October 27, 2009

Judge Sue L. Robinson: Witness Excused

What do you do when a key witness falls ill and is no longer able to testify? Judge Robinson in Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc. excused the inventor/witness from testifying based on a letter from her doctor. She noted, however, that "because it is not clear from the submission how the diagnosed condition is affecting [the inventor's] daily life, sanctions will be imposed against [the defendant] in this case if [the inventor] provides any testimony (through a declaration, a deposition or at trial) in any other case involving the patents at bar." C.A. No. 08-290-SLR, Order (D. Del. Oct. 23, 2009). She further stated that "[d]epending on the circumstances, I would consider sanctions ranging in severity from the imposition of an adverse inference to the imposition of the costs of a new trial to the imposition of an adverse judgment." Id.

Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc., C.A. No. 08-290-SLR, Order (D. Del. Oct. 23, 2009).

Posted On: October 26, 2009

Gregory M. Sleet: Roadmap for Jurisdictional Discovery on Delaware Entities

Jurisdictional discovery is a valuable tool that can be used to stave off an action's dismissal for a lack of personal jurisdiction. A recent decision by Chief Judge Gregory M. Sleet provides a roadmap for this type of discovery, at least where the formation of a separate Delaware entity comprises the jurisdictional dispute. After deferring decision on the underlying motion, the Court ordered the following discovery:

"(1) [Movant's] role in the formation, investment in, or contribution to any of the Delaware entities [at issue]; and (2) [the alleged alter ego's] corporate structure, as well as [movant's] role within that structure. Such discovery shall include, but is not limited to, all correspondence between [movant] and the State of Delaware Department of State, and all correspondence between [movant] and any State of Delaware registered agents."

Gannett Satellite Information Network Inc. v. Office Media Network Inc., C.A. No. 08-96-GMS (D. Del. Oct. 23, 2009) (Sleet, C.J.).

Posted On: October 23, 2009

Gregory M. Sleet: Markman and the Plain Meaning Doctrine

Claim construction often can be a complex affair - or not. In a recent decision, Chief Judge Gregory M. Sleet construed several terms according to their plain meaning. By doing so, the Court reminded practitioners of the Federal Circuit's admonition that not all claims must be rephrased:

"In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words."

Hesco Bastion Limited v. ACS Holdings USA, LLC, C.A. No. 08-266-GMS (D. Del. Oct. 20, 2009) (Sleet, C.J.).


Posted On: October 23, 2009

Judge Robinson Claim Construction/Validity Opinion

On Monday, Judge Robinson issued a thorough, lengthy opinion resulting from a patent infringement bench trial where Judge Robinson found in favor of plaintiff Alcon, despite several claim construction and validity arguments by defendant Teva. Alcon, Inc. v. Teva Pharmaceuticals USA, Inc., Civ. No. 06-234-SLR (Oct. 19, 2009). Teva had filed an Abbreviated New Drug Application (“ANDA”) “to market a generic version of the antibacterial drug VIGAMOX® proprietary to plaintiffs.” Id. at 1. VIGAMOX is an antibiotic, and its active ingredient, moxifloxacin hydrochloride, is protected by Patent No. 6,716,830, according to Alcon. Teva’s submission of an ANDA is an act of infringement, id. at 14, so the two issues in this case were (1) claim construction (whether the Teva’s generic is covered by the Alcon’s patent) and (2) validity.

Claim construction turned solely on the definition of “moxifloxacin” as used in claim 1 of Alcon’s ‘830 patent. Id. at 14-15. Both Teva’s generic and Alcon’s patent include “moxifloxacin” as the active ingredient, but Teva argued that Alcon’s patent had redefined “moxifloxacin” to mean something narrower than the ordinary industry understanding of that term. According to Teva, “because the specification . . . provides an alternate meaning for the claim term ‘moxifloxacin’ in the form of the depiction of a structurally different compound, the ordinary meaning of moxifloxacin has been displaced.” Id. at 18. Teva further argued that the specification referred to a “new class of antibiotics,” and that quinolones, the class to which moxifloxacin belongs, “were not a new class of antibiotics; therefore, the subject matter of the ‘830 patent must be directed to a different family of compounds.” Id. The court rejected each of these arguments, because “[t]he record before the court is replete with instances in which Teva’s proposed construction is at odds with the specification of the ‘830 patent so as to cause an absence of the . . . clarity, deliberateness and precision” required for a patentee to “act as his own lexicographer.” Id. at 18-19.

The validity analysis started with anticipation, which focused on a prior patent. Id. at 21-26. The prior patent disclosed a similar moxifloxacin composition, but at a different concentration range. Id. at 24-25. The ‘830 patent claimed a concentration range of “0.1 to 1.0 wt%,” while the prior patent’s range was “0.5 to 99.5 wt%.” Id. The court held that the prior patent did not anticipate the ‘830 patent, based on a genus/species analysis of the “range disparity” between the claimed and disclosed concentration numbers. Id. at 25. The court also rejected Teva’s argument that the prior patent had an “inherent range” that extended below the explicitly disclosed range. Id. at 26.

The court then addressed obviousness. Teva argued “that a motivation to combine exists inasmuch as moxifloxacin would have been ‘obvious to try’ in a topical ophthalmic composition, due to both market pressure and the existence of ‘a finite number of identified, predictable solutions’ to treat ophthalmic infections,’” and further that a person of ordinary skill in the art would have expected the combination to have desirable properties. Id. at 28. The court rejected each of these arguments, holding that “the record indicates anything but a finite number of identified, predictable solutions,” and that even if the result of substitution was predictable, that “provides little insight” into the “crucial” question of “whether the prior art motivated a person of ordinary skill to even select moxifloxacin for use in a . . . composition.” Id. at 30. In particular, the court focused on the fact that “the prior art consistently taught away from the use of moxifloxacin” in such compounds, due to its toxicity, poor performance, and ineffectiveness against certain “key” pathogens. Id. at 36, 30-33. Secondary considerations also supported non-obviousness, including initial skepticism by other experts in the field, the long felt need for a compound like this, the commercial success of VIGAMOX(r) (which achieved hundreds of millions of dollars in sales), and some unexpected properties of the invention. Id. at 35-36.

Finally, the court addressed the form requirements for validity, including best mode, written description, and enablement. Teva argued that the inventor had known, but failed to disclose, that the salt form of moxifloxacin was more effective, thus failing the best mode requirement; the court held that the inventor was not subjectively aware of the increased effectiveness of the salt form, and even if he had been, the salt form provides no material improvement anyway. Id. at 39-41. Regarding the written description requirement, Teva claimed that the specification called for a preservative, but the composition claimed did not include one; the court held that the specification encompassed embodiments that did not include a preservative, and thus met the requirement. Id. at 41-44. Finally, as to enablement, Teva asserted that the claim required undue experimentation, based on a lack of process steps in the specification; the court held that a person of ordinary skill in the art could determine appropriate steps and practice the invention.

Alcon, Inc. v. Teva Pharmaceuticals USA, Inc., Civ. No. 06-234-SLR (Oct. 19, 2009)

Posted On: October 22, 2009

Sanctions Ordered in Honeywell v. Nikon

In Honeywell International, Inc. v. Nikon Corp., C.A. No. 04-1337-JJF (Oct. 14, 2009), Judge Farnan, adopting the recommendation of Special Master Vincent J. Poppiti, ordered $18,000 in sanctions against InnoLux, a defendant in a patent infringement case, for its discovery behavior. Id. at 2. These sanctions resulted from a November 25, 2008 order requiring InnoLux to give plaintiff Honeywell an opportunity to re-depose the InnoLux's 30(b)(6) witness, because at the original deposition InnoLux rased multiple groundless objections, improperly instructed the witness not to answer questions allegedly outside of the scope of the discovery order, and possibly failed to adequately prepare the witness.

According to the Court's original order, "each and every objection and ensuing instruction not to answer on the grounds of work product was improper, and each is hereby stricken." Nov. 25th Order, at 3. Further, "It is inappropriate to instruct a 30(b)(6) witness not to answer a question, unless there is an appropriate claim of privilege." Id. Honeywell raised concerns about the witness's lack of preparation, and the number of times that the witness answered "I don't know"; the Court found that each of the questions that elicited an "I don't know" or to which an objection was raised were actually within the scope of the 30(b)(6) notice. Id. at 4-5. Due to the InnoLux's behavior, the Court ordered that the 30(b)(6) witness be re-deposed, and that the firm bear the costs of the deposition, including attorney's fees. Id. at 5. Although the court did not characterize these costs as "sanctions" in the original order, the Oct. 14 order referred to them as "sanctions," and set the amount at $18,000. Oct. 14 Order, at 2.

Continue reading " Sanctions Ordered in Honeywell v. Nikon " »

Posted On: October 22, 2009

Joseph J. Farnan: Transfer Denied After Movant Filed Its Own Suit in Delaware

A recent decision by district judge Joseph J. Farnan Jr. reaffirms the difficulty parties often have in transferring actions out of the District of Delaware. In considering defendant Hologic's motion to transfer venue, the Court recognized that nearly identical litigation between the same parties was already pending in the transferee jurisdiction. But, unlike most other transfer scenarios, Hologic had also filed a third action in Delaware, seeking to enforce its own patents on the same technology.

According to the Court, Hologic's decision to affirmatively litigate its own patents in Delaware weakened its position on transfer:

"The fact that Hologic initiated suit against Ethicon in this District - even though the parties were involved in other patent litigation concerning similar technology in the Southern District of Ohio - indicates that Hologic does not consider this District to be an inconvenient forum."

As a result, Hologic could not justify a transfer out of Delaware. This case stands as a reminder that first-filed pending litigation among the parties, which usually favors a transfer, can also stand as an impediment to obtaining a new forum.

Ethicon Endo-Surgery Inc. v. Hologic Inc., C.A. No. 09-580-JJF (D. Del. Oct. 15, 2009) (Farnan, J.).

Posted On: October 21, 2009

Judge Robinson: Motion to amend complaint to add inequitable conduct claim DENIED under new Exergen standard

In Robert Bosch LLC v. Pylon Manufacturing Corp., C.A. No. 08-542-SLR (D. Del. Oct. 19, 2009), Judge Robinson applied the Federal Circuit Exergen decision to Plaintiff’s motion to amend its complaint to add a claim of inequitable conduct. Plaintiff based its motion to amend on the assertion that one of the patent-in-issue’s inventors submitted an affidavit to the PTO containing a misrepresentation regarding the affiant’s review of the related application. Id. at 3. While agreeing with Plaintiff that submitting a false affidavit to the PTO “establishes at least a threshold level of materiality,” Judge Robinson noted that “there was no allegation that the affiant at bar did not contribute to the invention, or that the application that matured into the ‘380 patent contains otherwise false representations.” Id. at 4. Judge Robinson denied Plaintiff’s motion to amend because, under Exergen, she will not allow an inequitable conduct claim “to be pursued after the close of discovery when there are insufficient allegations of underlying facts from which [she] may reasonably infer that the material misrepresentation was made with a specific intent to deceive the PTO.” Id. (emphasis added).

Posted On: October 20, 2009

Chief Judge Gregory M. Sleet: Limits Disputed Claim Terms Per Patent to 10 in All Future Patent Actions

In an order issued in Grape Technology Group, Inc. v. Jingle Networks, Inc., Chief Judge Sleet pronounced in a footnote that the Court will impose a limit of 10 disputed claim terms per patent for claim construction in all future patent actions. Specifically, he noted:

"Although disinclined to do so in the past, the court - regrettably - will impose a limit of 10 disputed terms per patent for claim construction in this and all future patent actions." Grape Technology Group, Inc. v. Jingle Networks, Inc., C.A. No. 08-408-GMS, Order, at n. 1 (D. Del. October 20, 2009).

Grape Technology Group, Inc. v. Jingle Networks, Inc., C.A. No. 08-408-GMS, Order (D. Del. October 20, 2009).



Posted On: October 15, 2009

Judge Hillman: Registration Requirements for Image Published on Foreign Website

This opinion, by Judge Hillman (sitting by designation from the District of New Jersey pursuant to the standing order in this Court), addreses an issue of first impression for the Court related to subject matter jurisdiction over copyrighted images on the Internet. Moberg v. 33T LLC, C.A. No. 08-625-MLH-JS, Opinion (D. Del. Oct. 6, 2009). Pursuant to the Copyright Act, a plaintiff alleging infringement os a U.S. work must have registered the work. Id. at 5. The work plaintiff alleged was infringed was posted on a German website. Defendant argued the work was a U.S. work that plaintiff failed to register and therefore this Court lacked jurisdiction to hear any infringement action. Id. at 5-7. The Court, therefore, needed to decide whether a photograph posted to a foreign website is simultaneously "published" everywhere and therefore is a U.S. work and must be registed. Id. at 6-7.

The Court found that this work was not "published simultaneously" worldwide and therefore is not a U.S. work subject to registration. Id. at 14-15. A different finding would be contrary to the Berne Convention, would "allow American citizens to infringe on foreign copyrighted works without fear of legal retribution," and the United States copyright laws "provide for protection of foreign works in the United States without requiring the artists to undetake any formalties in the United States." Id.

Moberg v. 33T LLC, C.A. No. 08-625-MLH-JS, Opinion (D. Del. Oct. 6, 2009).

Posted On: October 12, 2009

Special Master Poppiti Denies Plaintiffs’ Motion to Dismiss Defendant InnoLux Without Prejudice

In Honeywell International Inc. et al. v. Apple Computer, Inc. et al., C.A. 04-1337-JJF (D. Del. Oct. 5, 2009), Honeywell filed a motion to dismiss Defendant InnoLux without prejudice under Fed. R. Civ. P. 41, while InnoLux, in addition to previously filing a motion for summary judgment, requested that InnoLux be dismissed from the litigation with prejudice. Id. at 1-2. Special Master Poppiti denied both requests for dismissal. Instead, Special Master Poppiti gave Honeywell two days to decide whether they would “either (1) accept dismissal of InnoLux with prejudice or (2) withdraw the Motion and proceed to a resolution of InnoLux’s pending Motion for Summary Judgment.” Id. at 2, 14. Special Master Poppiti reasoned that the factors evaluated to determine whether voluntary dismissal without prejudice would prejudice the dismissed defendant weighed in InnoLux’s favor. Id. at 6-12.

Honeywell International Inc. et al. v. Apple Computer, Inc. et al., C.A. 04-1337-JJF (D. Del. Oct. 5, 2009)

Posted On: October 9, 2009

New District of Delaware Intellectual Property Case Filings

9/9: Warner Chilcott Company LLC v. Lupin Limited and Lupin Pharmaceuticals Inc. (patent infringement)
9/15: Bayer Schering Pharma AG, Bayer Healthcare Pharmaceuticals Inc., Schering Corporation v. Teva Pharmaceuticals USA, Inc. and Teva Pharmaceutical Industries Ltd. (patent infringement)
9/16: Dorman Products Inc. v. Gates Corporation (trademark infringement)
9/16: Fair Isaac Corporation v. Actimize Inc. and NICE Systems Ltd. (patent infringement)
9/17: US Philips Corporation v. Samsung Electronics Company Ltd. and Samsung Electronics America Inc. (patent infringement)
9/18: Research Foundation of State University of New York, New York University, Galderma Laboratories, Galderma Laboratories LP v. Impax Laboratories (patent infringement)
9/18: Ricoh Company Ltd. and Ricoh Americas Corporation v. Oki Data Corporation and Oki Data Americas Inc. (patent infringement)
9/18: St. Clair Intellectual Property Consultants Inc. v. Apple Inc., Toshiba Corporation, Toshiba America Information Systems, Inc. and Tohsiba America, Inc. (patent infringement)
9/21: Life Technologies Corporation, Applied Biosystems LLC, Institute for Protein Research, Alexander Chetverin, Helena Chetverina, et al. v. Illumina Inc. and Solexa Inc. (patent infringement)
9/21: WhoGlue Inc. v. Facebook Inc. (patent infringement)
9/23: Eurand Inc. and Anesta AG v. Anchen Pharmaceuticals Inc. and Anchen Inc. (patent infringement)
9/25: Cephalon Inc. v. Watson Pharmaceuticals Inc., Watson Laboratories, Inc. and Watson Pharma Inc. (patent infringement)
10/5: Fairchild Semiconductor Corporation v. Infineon Technologies AG, Infineon Technologies North America Corporation (patent infringement)
10/6: Elan Pharma International Ltd. and Jazz Pharmaceuticals Inc. v. Actavis Elizabeth LLC, Anchen Pharmaceuticals Inc. and Anchen Incorporated (patent infringement)
10/6: Pfizer Inc., Pfizer Pharmaceuticals LLC, Pfizer Ireland Pharmaceuticals, Pfizer Limited and CP Pharmaceuticals International CV v. Sandoz Inc. (patent infringement)
10/7: Mekiki Co. Ltd. and Mekiki Creates Co. Ltd. v. Facebook Inc. (patent infringement)
10/8: The Medicines Company v. PLIVA-HRVATSKA d.o.o, PLIVA d.d., Barr Laboratories Inc., Barr Pharmaceuticals Inc., Barr Pharmaceuticals, LLC, et al. (patent infringement)

Posted On: October 9, 2009

Chief Judge Gregory M. Sleet: Markman Order

In Aventis Pharma S.A. v. Hospira, Inc., Judge Sleet construed several terms related to three patents on technology involving taxane (an anti-cancer drug) derivatives. C.A. Nos. 07-721-GMS, 08-496-GMS, Amended Order (D. Del. Oct. 5, 2009).

- "stock solution": The Court construed this term consistent with its plain meaning to mean "a concentrated solution."

- "essentially free or free of ethanol": The Court construed this term to mean "no more than 5% ethanol by volume" for a stock solution" and "the same amount of ethanol as a stock solution with no more than 5% ethanol by volume" for a perfusion.

-"dissolved": The Court gave this term its plain and ordinary meaning.

-"consisting essentially of": The Court construed this common claim term to mean "composed of the listed ingredients and may include other ingredients that do not affect the basic and novel properties of the invention."

-"which contains": The Court foundt his term to be an open ended term which does not exclude additiona ingredients and therefore construed the term mean "comprising."

-"Taxotere": The Court construed this term to mean the chemical compound "docetaxel."

-"capable of being injected without anaphylactic or alcohol intoxication manifestation": The Court construed this term to mean "having reasonable expectation of being injected without causing anaphylactic or alcohol intoxication manifestation."

Aventis Pharma S.A. v. Hospira, Inc., C.A. Nos. 07-721-GMS, 08-496-GMS, Amended Order (D. Del. Oct. 5, 2009).

Posted On: October 9, 2009

Judge Joseph J. Farnan: Supplemental Claim Construction Order

In the Court's Order construing some of the claim terms at issue in this infringement action, Judge Farnan requested supplemental briefing for the disputed claim term "homogeneously branched linear ethylene/ά-olefin interpolymers." See The Dow Chemical Company v. Nova Chemicals Corporation (Canada), C.A. No. 05-737-JJF, Order (D. Del. June 25, 2009).


The parties submitted additional briefing and the Court has construed the term to mean the following:

- "homogeneously branched linear ethylene/ά-olefin interpolymers": "ethylene ά-olefin interpolymer in which the comonomer is randomly distributed within a given interpolymer molecule and wherein substantially all of the interpolymer molecules have the same ethylene/comonomer ratio within that interpolymer. Such interpolymer has no long chain branching."

The Dow Chemical Company v. Nova Chemicals Corporation (Canada), C.A. No. 05-737-JJF, Memorandum Opinion and Order (D. Del. September 24, 2009).


Posted On: October 8, 2009

Judge Sue L. Robinson: Belated Discovery Justifies New Defense

A recent memorandum order by district judge Sue L. Robinson illustrates the importance of supplementing discovery - and the risks of discovery delay. In response to certain allegedly late-produced discovery, the defendants supplemented their contention-interrogatory responses to assert enablement and written-description defenses. The plaintiff objected and moved to strike the new defenses, which came after the supplementation deadline in the scheduling order.

The Court refused to strike the Section 112 defenses on the ground that "[t]he evidentiary basis for the defense rests, in large part, on information within the plaintiff's control." Plaintiff, therefore, "has the opportunity to respond within the context of expert discovery." Although unaddressed in the Court's order, perhaps defendants' explanation that the defenses could not be asserted until they received the belated discovery carried the day.

Smithkline Beecham Corp. v. Barr Pharmaceuticals Inc., C.A. No. 08-112-SLR (D. Del. Sept. 23, 2009) (Robinson, J.).

Posted On: October 7, 2009

Chief Judge Sleet: Brief Markman Order

In a brief Markman order, Chief Judge Sleet construed the following terms:

  • "Controlled release pellet formulation," construed to mean "an oral composition formulated to ensure that the active compound is released preferentially at the site of the disease to be treated." Id. at 1-2.

  • "A core consisting of a non-pareil seed," construed to mean "the innermost part of the pellet consisting of a non-pareil seed and optionally one or more pharmaceutically acceptable excipients." Id. at 2.

  • "A core consisting of ... a seed in which a glucocorticosteroid as defined in this claim is homogenously distributed," construed to mean "the innermost part of the pellet consisting of a non-pareil seed and optionally one or more pharmaceutically acceptable excipients.'" Id. at 2-3.
  • "A layer surrounding said core," construed to mean "a coating enclosing on all sides said core." Id. at 3. Chief Judge Sleet further defined "coating" as synonymous with "layer" in the context of this claim.

  • "About," construed to mean "approximately." Id. at 3. Chief Judge Sleet noted that "[t]he court is mindful that the word 'about' cannot be read out of a claim that cites a numeric range," but held that "any deviation from the recited range must be minimal" in this case due to restrictions in the prosecution history and the specification. Id. at fn. 7.

  • "A membrane surrounding both said core and said surrounding layer," construed to mean "a coating enclosing on all sides both said core and the layer surrounding said core." Id. at 4.

  • "Crohn's disease in the small intestine as relapse preventing therapy," construed to mean "Crohn’s disease of the small intestine, where treatment is used to maintain symptom control once remission has been achieved." Id. at 4.

  • "Controlled release pharmaceutical formulation," construed to mean "an oral composition formulated to ensure that the active compound is released preferentially at the site of the disease to be treated." Id.

AstraZeneca LP v. Mylan Pharmaceuticals Inc., C.A. No. 08-305-GMS (D. Del. Oct. 5, 2009)

08-305_08-453

Posted On: October 7, 2009

Magistrate Judge Stark: Report and Recommendation Regarding Claim Construction

Magistrate Stark recently issued a Report and Recommendation Regarding Claim Construction in Fujinon Corp. v. Motorola, Inc., C.A. No. 07-533-GMS-LPS (D. Del. Sept. 11, 2009). The disputed terms construed by Magistrate Judge Stark and his recommendations are as follows:

“A stop”Although Judge Stark noted that Plaintiff’s process to reach their proposed construction was flawed, he adopted their construction thereby recommending “‘an element with a hole or opening that blocks or limits light.” Id. at 8. Judge Stark rejected Defendant’s limited construction of “an aperture stop” because to limit the claim would be contrary to the Federal Circuit’s warning against limiting claims to specific embodiments in the specification. Id. at 10.

“Near the optical axis”Construed as “‘a central region that surrounds the optical axis but excludes a substantial peripheral region surrounding the central region.’” Id. at 16-17.

“Within an effective aperture range of the single focus lens”Although Judge Stark was “concerned” with Plaintiff’s construction, Defendant offered no alternative, therefore Judge Stark recommended a construction of “‘within an effective aperture range of the single focus lens.” Id. at 17-18.

“Center”Construed as “‘the center region, including the geometric center.” Id. at 18.

“Peripheral region”Judge Stark agreed with Defendant that the term was ambiguous, over Plaintiff’s objection that the term need not be construed. Id. at 18. Judge Stark, adopting part of Defendant’s proposed construction modified to be consistent with the specification, recommended the Court construe the term as “‘any portion of the region that begins outside 70% of the radius of the third lens.’”

Fujinon Corp. v. Motorola, Inc., C.A. No. 07-533-GMS-LPS (D. Del. Sept. 11, 2009)

07-533

Posted On: October 7, 2009

Judge Sue L. Robinson: Bifurcation of patent infringement action from defendants’ antitrust counterclaims and patent misuse affirmative defense

In Eurand Inc. et al. v. Mylan Pharms. Inc. et al., C.A. No. 08-889-SLR (D. Del. Oct. 1, 2009), Judge Robinson recently granted plaintiffs’ motion to sever and stay discovery on defendants' antitrust and patent misuse counterclaims and affirmative defenses. Although Judge Robinson recently clarified her stance as to bifurcation of damages and willfulness in patent cases, Judge Robinson granted plaintiffs’ motion here because the request was “supported by the promotion of judicial economy and avoiding the injection of complex, unrelated and perhaps unnecessary issues into the patent infringement case.” Id. at 3.

Eurand Inc. et al. v. Mylan Pharms. Inc. et al., C.A. No. 08-889-SLR (D. Del. Oct. 1, 2009)

Posted On: October 7, 2009

Chief Judge Gregory M. Sleet: Aggressive Markman Tactics Backfire

Chief Judge Gregory M. Sleet recently issued a claim-construction opinion notable for what it did not construe. On review of a magistrate judge's recommendation, the Court rejected the defendants' attempts to argue issues beyond the scope of the Markman proceeding:

"The defendants have also made a number of claim differentiation . . . and other invalidity arguments, though they couched these arguments as claim construction objections. Such validity arguments are not properly resolved at the claim construction stage."

The Court's decision stands as a warning to D. Del. practitioners: aggressive Markman tactics will not succeed in this district. (See also footnote 5 of the Court's opinion.)

Forest Laboratories Inc. v. Cobalt Laboratories Inc., C.A. No. 08-021-GMS-LPS (D. Del. Sept. 21, 2009) (Sleet, C.J.).

Posted On: October 2, 2009

Chief Judge Sleet: Final Honeywell Opinion Deals with Costs

In what looks to be the final opinion in a patent infringement case that has continued since 1999, Chief Judge Gregory M. Sleet partially affirmed a decision by the Clerk of Court not to grant costs requested by defendant Hamilton Standard, whose trial victory was affirmed by the Federal Circuit in April. Hamilton sought trial costs of $431,200.47, but the Clerk granted only $2,410. Hamilton appealed that decision to the District Court, which affirmed, except as to bond premiums for a bond Hamilton posted to stay execution of judgment pending post-trial motions (in the amount of $36,540). Chief Judge Sleet affirmed the denial of Hamilton’s other costs, including:

  • Transcripts: Under Local Rule 54.1(b)(2), transcript costs are taxable only "when requested by the Court or prepared pursuant to stipulation," neither of which was the case here. Id. at 2.

  • Depositions: Under 54.1(b)(3), deposition costs are "taxable only where a substantial portion of the deposition is used in the resolution of a material issue in the case," which did not occur here: the witnesses testified live, and mere use of the deposition transcript to prepare the witnesses was "scarcely relevant." Id. at 3. Chief Judge Sleet also found it insufficient that "some portion of" one deposition was "played or read at trial," and that, for one witness, the Federal Circuit "quoted eight words of the (at least) 278-page deposition in its 21-page opinion affirming [the district] court's ruling on remand." Id.

  • Exhibits: The court rejected the $173,855.77 requested for exhibits under 28 U.S.C. § 1920(4), and Local Rules 54.1(b)(5)-(6) for three reasons: (1) lack of specificity in the documentation of costs, which meant that the Clerk and the Court could not adequately apply the law, id. at 6-7; (2) the costs "relate[d] primarily to graphics design and computer animation work," which is not covered under any of the rules, id. at 7; and (3) "parties may not recover costs for the preparation of animations, graphics design, and other exhibits that serve primarily an argumentative or adversarial function," id. at 8.

What could Hamilton have done differently to recover these costs? Not much. The law regarding taxable transcripts and depositions is plain, and even if Hamilton had provided more detail about the exhibits in its reports, it could only have been awarded the minor costs of the physical copies submitted to the court, not the development and graphics design cost of the exhibits themselves. Id. at 7-8. Note, however, that Judge Robinson suggested in 2006 that "reasonable" fees for exhibit preparation might be taxable, as we covered here.

Honeywell Intl., Inc. v. Hamilton Sundstrand, No. 99-309 (D. Del. Sept. 30, 2009)

99-309

Posted On: October 2, 2009

Magistrate Judge Leonard P. Stark: Reining In The Complexities of Multi-Venue Litigation

In his recent decision granting a motion to amend, Magistrate Judge Leonard P. Stark offered a new take on whether adding new patents following the close of the pleadings will unduly complicate a case. In the underlying litigation, the parties had filed competing complaints in both Delaware and Maine. The Delaware plaintiff sought to amend its complaint to seek a non-infringement declaratory judgment on several patents asserted against it in Maine.

The Delaware defendant unsuccessfully objected to the alleged added complexity:

"Fairchild also contends that adding two more patents to the eleven patents already at issue in the Delaware Action would unduly complicate this case. Yet Fairchild's own proposal of simultaneously litigating the two cases five hundred miles apart, potentially requiring the services of two juries and at least two judges, as well as two rounds of discovery, two sets of claim construction briefs, two Markman hearings, two summary judgment motions, and the like, seems far more complicated."

Even with thirteen patents at issue, the complexity argument remains a double-edged sword.

Infineon Technologies AG v. Fairchild Semiconductor Int'l Inc., C.A. No. 08-887-SLR-LPS (D. Del. Sept. 30, 2009) (Stark, M.J.).