Posted On: January 31, 2010

Judge Joseph J. Farnan, Jr.: Addressing Motions to Amend

Judge Farnan recently addressed motions to amend in two related cases.

In WebXchange Inc. v. Dell, Inc. and WebXchange Inc. v. FedEx Corporation, the defendants sought to amend their answers (after the amendment deadline) to "add flesh" to their inequitable conduct affirmative defenses and counterclaims. C.A. No. 08-132-JJF, Memo. Op. (D. Del. Jan. 20, 2010); C.A. No. 08-133-JJF, Memo. Op. (D. Del. Jan. 20, 2010). The court granted defendants' motions to amend finding that the amendments could not have been made prior to the pleading deadline, "despite [their] diligence." Id. at 5. Furthermore, the court found that the amendments were not futile because factual determinations regarding the the extent of the inventor's knowledge of certain documents and whether they were intentionally withheld from the PTO are "not appropriate at this stage of the litigation." Id. at 9. The amendments also do not prejudice plaintiff because the amendments relate to two earlier theories alleged by defendants in their earlier amended answers, no Markman hearing has been held, no trial date has been set and the close of expert and fact discovery are set off the Markman order. Id. at 9.

WebXChange Inc. v. Dell, Inc., C.A. No. 08-132-JJF, Memo. Op. (D. Del. Jan. 20, 2010).


WebXChange Inc. v. FedEx Corporation, C.A. No. 08-133-JJF, Memo. Op. (D. Del. Jan. 20, 2010).



Posted On: January 29, 2010

Judge Robinson: Interpretation of In Re Seagate

In Cordis Corporation v. Boston Scientific Corporation, C.A. No. 03-27-SLR (D. Del. Jan. 28, 2010), Judge Robinson had an opportunity to lay out her views on In re Seagate Techonology, LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc). In Re Seagate held that "to establish willful infringement, a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent. . . . If this threshold objective standard is satisfied, the patentee must also demonstrate that this objectively-defined risk (determined by the record developed in the infringement proceeding) was either known or so obvious that it should have been known to the accused infringer." Id. at 2, quoting Seagate.

Judge Robinson expressed her view that this holding allows consideration only of pre-litigation evidence, excluding things like prior court decisions:

It cannot be emphasized enough that the litigation process is a complicated one, comprising multiple steps and moved forward by multiple decisions, ranging from resolving a discovery dispute to a case-dispositive motion. Consequently, I am very uncomfortable with characterizing administrative and court decisions as "objective evidence" for presentation to a jury. As recognized by counsel, a jury is going to give such evidence great weight, even when the procedural and substantive bases for most such decisions will not be apparent to the jury. This strikes me either as the kind of evidence better suited for review by a court' or as eliciting the kind of hindsight review that is so strenuously discouraged in other aspects of patent law. See KSR Intern. Co, v. Teleflex Inc., 550 U.S. 398, 421 (2007). Therefore, consistent with the reasoning of the Seagate decision as a whole (and its emphasis on prelitigation conduct), generally only evidence regarding the prelitigation landscape of the dispute will be admitted.
Id. at 3-4. Further, even pre-litigation evidence remains subject to the Rule 403 standard. Id. at 5. Based on those rules, Judge Robinson excluded various evidence from the damages portion of the case, including a prior preliminary judgment decision, the outcome of other prior litigation, and statements issued during re-examination proceedings. Id. at 4-5.

Cordis Corporation v. Boston Scientific Corporation, C.A. No. 03-27-SLR (D. Del. Jan. 28, 2010)

Posted On: January 29, 2010

Sue L. Robinson: ANDA Filer Succeeds in Prosecution Laches Defense

District judge Sue L. Robinson this week issued a rare win to a party asserting a laches defense. According to the Court, eleven patent applications and ten abandonements, among others, adequately demonstrated the patent-in-suit's unenforceability:

"Taken in the totality, this case involves eleven patent applications, ten abandonements, and no substantive prosecution for a decade. CRCT's primary justification for delay, that neither Examiner Ford nor Examiner Richter would have allowed the applications at issue absent human data, is not objectively reasonable in view of the fact that CRCT never attempted to traverse the rejections (thereby either validating its position or obtaining allowance of its claims). CRCT's delay, therefore, cannot 'be explained by reference to [ ] legitimate considerations and/or expectations.' . . . CRCT introduced no contemporaneous evidence substantiating its position or establishing that CRCT sought to develop the technology prior to the Schering license. CRCT only engaged the PTO once it had a profit motive to do so."

With these delays, the ANDA filer established the abuse of the patent system necessary to a successful prosecution-laches defense.

Cancer Research Technology v. Barr Labs. Inc., C.A. No. 07-457-SLR (D. Del. Jan. 26, 2010) (Op. Part II).

Posted On: January 27, 2010

Chief Judge Sleet: Claim Construction Order

In Grape Technology Group, Inc., et al. v. Jingle Networks, Inc., C.A. No. 08-408-GMS (D. Del. Jan. 25, 2010), Chief Judge Sleet recently construed the following terms of the patents at issue:

“affiliated with a customer command … issued from a customer telephonic device”
related to a customer command transmitted from a telephone

“generating a data field”
construed to have its plain and ordinary meaning

“the enhanced directory service sought by the customer”
service supplemental to standard telephone number directory assistance to be provided to the calling party

“ordered as a function of”
construed to have its plain and ordinary meaning

“establishing a communication”
enabling the exchange of signals

“event record”
one or more data fields used to memorialize an aspect of an information assistance call for purposes of billing

“during the communication” and “during the communications connection”
while the signals are enabled to be exchanged

“interface to receive signals to establish a communication”
hardware, software, or a combination thereof that accepts incoming information assistance requests

“subscriber”
any individual or business entity whose information is stored for retrieval by the communication assistance system

“information corresponding to a plurality of subscribers” and “information corresponding to subscribers” and “information corresponding to each of said subscribers”
data associated with subscribers

“a subscriber information other than the subscriber information requested by said requester”
construed to have its plain and ordinary meaning

“telephone switch”
construed to have its plain and ordinary meaning

“a first database”
construed to have its plain and ordinary meaning

“closing prompt message”
a message provided to a calling party upon completion of the information assistance call but prior to connecting the subscriber

“select(ing) a closing prompt code from a plurality of available closing prompt codes” and “selects said closing prompt code from any one of said available closing prompt codes” and “selection of said closing prompt code by said closing prompt module is from any one of said available closing prompt codes . . . relating to a subscriber information other than the subscriber information requested by said requester”
construed to have its plain and ordinary meaning

“available closing prompt codes”
construed to have its plain and ordinary meaning

“desired closing prompt message”
a closing prompt message identified by a specific closing prompt code

“available closing prompt messages”
construed to have its plain and ordinary meaning

Grape Technology Group, Inc., et al. v. Jingle Networks, Inc., C.A. No. 08-408-GMS (D. Del. Jan. 25, 2010)


Posted On: January 27, 2010

Federal Circuit upholds Judge Robinson’s decision that Teva's ANDA product does not infringe Takeda's patent

The Federal Circuit has affirmed, without discussion, Judge Robinson’s decision in Takeda Pharma. Co. Ltd. v. Teva Pharma. USA Inc., C.A. No. 07-331-SLR (D. Del. Nov. 9, 2009) (Robinson, J.), that Takeda failed to prove that Teva’s ANDA products infringe Takeda’s patent.

In her opinion, Judge Robinson had emphasized the importance of a patentee's conduct during prosecution for later claims of infringement. In the underlying action, the patentee alleged that defendant's ANDA product, which covered an oral tablet that dissolved without water, contained distinct disintegrating and swelling agents, as required by the patent. The Court disagreed, resting its conclusion of non-infringement in part on the patentee's own disavowal of the purportedly infringing disintegrating agent.


Posted On: January 27, 2010

Joseph J. Farnan: No Fees for Successful Discovery Motion

Despite granting the relief sought in a discovery motion, district judge Joseph J. Farnan Jr. has issued a decision declining to award the movant its fees and costs. In the underlying motion, WebXchange sought to compel 30(b)(6) testimony from FedEx about the company's shipping practices. According to FedEx, the topic - an infringement contention - had been untimely disclosed. Observing the absence of prejudice, the Court refused to limit the deposition, and allowed the testimony. Notably, however, the Court rejected a corresponding request for fees and costs:

"The Court concludes that an award of damages and costs is not justified in this situation. Although Plaintiff was successful in its [motion], Defendants were substantially justified in taking the position of opposition based upon the legitimate dispute on whether 'Shipping' has been listed as an infringement contention."

In this case, the "legitimate" discovery dispute precluded the otherwise available Rule 37 sanctions.

WebXchange Inc. v. FedEx Corp., C.A. No. 08-133-JJF (D. Del. Jan. 20, 2010) (Farnan, J.).


Posted On: January 26, 2010

Breaking News: District Judge Joseph J. Farnan to Retire

District judge Joseph J. Farnan Jr. has announced that he will retire from the bench on July 31st:

"After 25 years of dedicated service as a United States District Judge for the District of Delaware, and being fully eligible for retirement on June 15, 2010, the Honorable Joseph J. Farnan, Jr. today submitted his letter of retirement to President Barack Obama. Judge Farnan plans to leave his office on July 31, 2010 and return to the practice of law. During his tenure on the bench, Judge Farnan was pivotal in cementing the Court's reputation as a national venue for complex litigation. His wit and unique perspective will be sorely missed by his colleagues, Court personnel and federal practitioners alike."

The announcement can be found on the D. Del. website.

Posted On: January 26, 2010

Joseph J. Farnan: Demonstrating "Good Cause" to File an Untimely Amended Pleading

A recent decision by district judge Joseph J. Farnan Jr. highlights the expedited schedule a party must pursue to successfully amend a pleading past a discovery deadline. Under FRCP 16(b)'s "good cause" standard, unlike the more lenient amendment standard in FRCP 15(a), an untimely amendment "hinges on [the] diligence of the movant." According to the Court, the following discovery schedule - implemented to uncover a new inequitable-conduct defense - satisfied the good-cause standard:

June 5: Subpoena issued to witness
June 15: Documents produced by witness
June 16, 23, 24, 26: Depositions
June 30: Motion to amend filed

Under the circumstances of this case, a one-month window from subpoena to motion demonstrated the necessary diligence for amending a pleading outside the scheduling order's confines.

ICU Medical Inc. v. Rymed Tech. Inc., C.A. No. 07-468-JJF (D. Del. Dec. 16, 2009) (Farnan, J.).

Posted On: January 25, 2010

Judge Robinson: Plaintiffs’ motion for summary judgment of invalidity of all patents at issue GRANTED.

Plaintiffs Boston Scientific Corporation and Boston Scientific Scimed Inc. (“BSC”) brought four patent infringement actions against Johnson & Johnson Inc. and Cordis Corporation (“J&J”) seeking a judgment of invalidity for four coronary stent patents. Boston Scientific Corporation, et al. v. Johnson & Johnson Inc., et al., C.A. No. 07-333-SLR (D. Del. Jan. 20, 2010) (consolidated). BSC moved for summary judgment of invalidity. Judge Robinson granted BSC’s motion on the basis that J&J’s patent specifications contain insufficient written descriptions. For example, three of the patents contained “no definitions, examples, or experimental models provided for determining whether a compound is a structurally similar analog as contemplated by the patentees.” Id. at 24. Because, based on the disclosure, a person skilled in the art would not recognize a description of the claimed analogs, “no reasonable jury could find that the written description requirement has been met with respect to the claimed analogs.” Id. at 26. In addition, Judge Robinson found non-enablement because a person with ordinary skill in the art could not make the claimed invention without undue experimentation. Id. at 27.

Judge Robinson also determined that the fourth patent was invalid due to failures in the written description. Id. at 30. Specifically, the relevant analogs were not “named, structurally depicted, exemplified, or otherwise described in the ‘662 patent specification.” Id. Moreover, “although limited by function, the claims of the ‘662 patent are drawn to a genus of [certain] analogs without any description of any species within the genus. The Federal Circuit has required the identification of ‘sufficient species’ to show that the totality of the genus was invented and disclosed.” Id. at 31 (citing Carnegie Mellon Univ. v. Hoffman-LaROche Inc., 541 F.3d 1115, 11261 (Fed. Cir 2008)).

Boston Scientific Corporation, et al. v. Johnson & Johnson Inc., et al., C.A. No. 07-333-SLR (D. Del. Jan. 20, 2010)

Posted On: January 21, 2010

Judge Robinson: claim construction order construing terms of four patents relating to coronary stents

In Boston Scientific Corp., et al. v. Johnson & Johnson, Inc., et al., C.A. No. 07-333-SLR (D. Del. Jan. 20, 2010), Judge Robinson construed the following terms as follows:

1. Stent
A device for providing support for a lumen in the body.

2. Biocompatible
Able to perform its function in the body with an acceptable biological response.

3. Therapeutic agent
A substance administered to treat or prevent a disease or condition.

4. Drug
A substance administered to treat or prevent a disease or condition.

5. Polymer
A material formed by polymerization and comprising repeating units of the same (homopolymer) or different (copolymer) types of monomers.

6. Copolymer
A polymer having two or more different types of monomers.

7. Polymeric carrier
A material comprised of at least one polymer that is formulated with the therapeutic agent.

8. Polymeric coating; coating
Covering layer(s) comprising a mixture of both a polymer and the therapeutic agent or drug.

9. Acrylate-based polymer or copolymer
A polymer in which at least one of the types of monomers is based on the structure of a salt or ester of acrylic acid.

10. Fluorinated polymer
A polymer containing one or more fluorine atoms.

11. Poly(ether-ester) copolymer
A polymer containing one monomer that includes an ether and another monomer that includes an ester.

12. Rapamycin or a macrocyclic lactone analog thereof
Sirolimus or a macrocyclic lactone molecule with a striction similar to sirolimus.

13. Rapamycin
Sirolimus and all analogs, derivatives and congeners that bind FKBP12 and possess the same pharmacologic properties as sirolimus.

14. Macrocyclic triene analog
A macrocyclic triene molecule with a structure similar to rapamycin and that binds FKB12.

15. An amount effective to inhibit neointimal proliferation
An amount sufficient to diminish neointimal proliferation.

16. Provides a controlled release of said therapeutic agent over a period of several weeks
Therapeutic agent is discharged gradually over the course of several weeks.

17. Releases
Discharges

18. Mixture; mixture thereof; blend thereof; incorporated into
Combination of two or more substances, or the act of combining said materials.

19. Applied; applied thereto; onto the stent; affixed to the intraluminal stent
Attached to the stent.

20. In-stent late loss
The minimal lumen diameter within the stent immediately following implantation minus minimal lumen diameter within the stent at a specified time following implantation.

21. In-stent diameter stenosis
100 X [1 – minimal lumen diameter/reference vessel diameter].

22. Quantitative coronary angiography
A test to measure the lumen diameter of coronary vessels.

23. Mean in-stent loss
The average of in-stent late loss values.

24. Human population
A class of people distinguished by particular traits or characteristics.

25. Mean in-stent diameter stenosis
The average of in-stent diameter stenosis values.

26. About
Approximately.

Boston Scientific Corp., et al. v. Johnson & Johnson, Inc., et al., C.A. No. 07-333-SLR (D. Del. Jan. 20, 2010)

Posted On: January 21, 2010

Joseph J. Farnan: Paperless Event Ticketing Claims Construed

For those with clients in the entertainment industry, district judge Joseph J. Farnan Jr. recently issued a notable decision construing claims related to paperless event ticketing. In particular, the Court construed the following claims:

"Personalized Physical Material"
"Paperless Ticket"
"Authentication Data"
"Exchanging"
"Data Center"
"Asks"
"Bid"
"Ask Quantity," "Ask Price," "Bid Quantity," and "Bid Price"
"Comparing the Bid to the Asks"
"Completing a Transfer of the Paperless Tickets When the Bid Price Equals the Ask Price and the Ask Quantity is Equal to or Greater than the Bid Quantity"
"The System"
"Access to the Venue Upon Presentation of the Buyer Authentication Data to an Access Device"

The Court also construed seven means-plus-function terms:

"Means for Associating the Paperless Tickets with Authentication Data of the Ticket Seller"
"Means for Reassociating the Paperless Tickets with Authentication Data of the Ticket Buyer"
"Means for Receiving from Ticket Sellers Electronic Asks"
"Means for Receiving from a Ticket Buyer an Electronic Bid"
"Means for Granting Access to the Event Upon Presentation of the Buyer Authentication Data of the Paperless Ticket"
"Means for Comparing the Bid to the Asks"
"Means for Completing a Transfer of the Paperless Tickets When the Bid Price Equals the Ask Price and the Ask Quantity is Equal to or Greater Than the Bid Quantity"

Flash Seats LLC v. Paciolan Inc., C.A. No. 07-575-JJF (D. Del. Jan. 19, 2010).


Posted On: January 21, 2010

Magistrate Judge Thynge: On remand from Federal Circuit motion for summary judgment based on laches GRANTED

In Crown Packaging Technology, et al. v. Rexam Beverage Can Co., C.A. No. 05-608-MPT, D. Del. Jan. 15, 2010, Magistrate Judge Thynge recently granted counterclaim-defendant Crown’s motion for summary judgment based on laches. This case returned to Judge Thynge after the Federal Circuit reversed the Court’s grant of Rexam’s summary judgment motion of noninfringement and the Court’s grant of Crown’s motion for summary judgment for failure to mark, thereby dismissing Rexam’s counterclaim. Id. at 2. After the parties stipulated to dismiss Crown’s claim of infringement, the only issue remaining in dispute was Rexam’s counterclaim of infringement. Id. at 3.

The parties are in the business of manufacturing and selling aluminum cans. Pursuant to its summary judgment motion, Crown argued that Rexam impermissibly delayed in filing its counterclaim because more than six years had passed between any infringement and the filing. Id. at 12. Finding in Crown’s favor, the court noted that “[a]lthough can manufacturing is squarely within Rexam’s field of endeavor, a field populated by very few competitors, and Crown’s activities in that field were open, pervasive, and notorious, Rexam never undertook any investigation of the circumstances associated with Crown’s alleged infringing activities. . . . Further, because Rexam delayed more than six years before filing its counterclaim, this court presumes that the delay was both unreasonable and prejudicial.” Id. at 17 (emphasis in original). Furthermore, Rexam failed to produce sufficient evidence that its delay was reasonable or whether any prejudice exists. Id. at 18-21.

Crown Packaging Technology, et al. v. Rexam Beverage Can Co., C.A. No. 05-608-MPT, D. Del. Jan. 15, 2010

Posted On: January 21, 2010

Magistrate Judge Mary Pat Thynge: Markman Order

Magistrate Judge Mary Pat Thynge issued a claim construction order in the Innovative Patents, L.L.C. v. Brain-Pad, Inc. matter which involves a patent for an apparatus that enhances absorption and dissipation of impact forces for sweatbands (U.S. Patent No. 7,234,174). C.A. No. 07-680-MPT, Memorandum Order (D. Del. Jan. 13, 2010). The following claims were construed consistent with Phillips v. AWH Corp.:

- "sweatband"
- "relatively thin in nature"
- "curved in configuration"
- "intended area"
- "consistent memory"
- "semi-rigid"
- "apertures"

Of interest, for each claim term, the Court declined to adopt the parties' proposed construction and instead adopted its own meaning.


Innovative Patents, L.L.C. v. Brain-Pad, Inc., C.A. No. 07-680-MPT, Memorandum Order (D. Del. Jan. 13, 2010).

Posted On: January 12, 2010

Chief Judge Gregory M. Sleet: Motion to Sever and Stay Denied

Chief Judge Sleet recently denied a party's motion to stay and sever proceedings related to two patents-in-suit where an interference was pending at the USPTO. LG Electronics U.S.A., Inc. v. Whirpool Corp., C.A. No. 08-234-GMS, Order (D. Del. Jan. 6, 2010). The Court denied the motion on the grounds that it was filed "after the close of discovery and after a trial date had been set" and because "resolution of the interference proceeding may not resolve all of the asserted claims or issues" with respect to those two patents. Id. at 3. (Only certain claims of the two patents were before the PTO as part of the interference.)

LG Electronics U.S.A., Inc. v. Whirpool Corp., C.A. No. 08-234-GMS, Order (D. Del. Jan. 6, 2010).

Posted On: January 5, 2010

Joseph J. Farnan: Overlapping Evidence Stalls Bid to Bifurcate Inequitable-Conduct Defense

A recent decision by district judge Joseph J. Farnan Jr. serves to remind litigators that bifurcation is not always a sure bet. In the underlying litigation, the Court rejected an attempt to carve out an inequitable-conduct defense:

"Defendants must meet a high burden to be successful [in proving the defense]. In light of this burden, the potential that duplicative evidence regarding the alleged prior art will be presented at an inequitable conduct trial and at subsequent trials on infringement and invalidity weighs against bifurcation . . . . Accordingly, bifurcating trial on the issue of inequitable conduct will not promote judicial efficiency."

The winning argument? Plaintiff's assertion that it would have to present "much of the same background testimony" in both proceedings to describe the scope of the patents-in-suit and contrast the prior art.

WebXchange Inc. v. Dell Inc., C.A. No. 08-132-JJF (D. Del. Dec. 30, 2009) (Farnan, J.).