Posted On: February 26, 2010

Mary Pat Thynge: "Expected" Change in Federal Circuit Precedent Cannot Control JMOL Inquiry

A recent decision by Magistrate Judge Mary Pat Thynge puts to rest the notion that a district court will follow an anticipated change in the law when considering a post-verdict motion for judgment as a matter of law. In its decision, the Court acknowledged that, just last month, the Federal Circuit heard argument on whether Section 112 contains a written-description requirement distinct from the enablement requirement. The resulting "expected intervening change in the law," however, was insufficient to warrant immediate judicial recognition:

"It is the court's opinion that an expectation of change does not constitute an intervening change. . . . The court recognizes that the Federal Circuit has heard oral argument in Ariad Pharms., Inc. v. Eli Lilly & Co. and that the Federal Circuit's forthcoming decision in that case may alter the scope and purpose of the written description requirement. However, this court . . . is constrained to follow existing standards under Federal Circuit law, and Federal Circuit precedent 'clearly recognizes a separate written description requirement.' " (slip op. at 19)

Cordance Corp. v. Amazon.com Inc., C.A. No. 06-491-MPT (D. Del. Feb. 22, 2010) (Thynge, M.J.).

Posted On: February 25, 2010

Judge Robinson: No Interference in Genetics Institute

Judge Robinson issued a memorandum opinion yesterday in Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc., C.A. No. 08-290-SLR (D. Del. Feb. 24, 2010). Plaintiff Genetics Institute, LLC filed a 35 U.S.C. § 291 action seeking a determination of priority for their patent over two patents owned by Novartis Vaccines and Diagnostics, Inc. Id. at 1-2. To satisfy § 291, the plaintiff must show interference-in-fact; part of that showing is the "two way test," which means that the second patent must be either anticipated by or obvious in light of the first patent. Id. at 10-12. Defendants brought a motion to dismiss, arguing that plaintiffs had failed to meet the standard.

The Court's application of the anticipation and obviousness tests was relatively straightforward. It turned on the Federal Circuit's holding that "[t]he disclosure of a range 'is only that of a range, not a specific [point] in that range[, i.e.] the disclosure of a range is no more a disclosure of the end points of the range than it is each of the intermediate points." Atofina v. Great Lakes Chemical Corp., 441 F.3d 991 (Fed. Cir. 2006). The patents involved amino acid gaps in a protein to assist in blood clotting; because the range of gaps did not line up properly under Atofina, the court held that the prior patent did not anticipate the subsequent ones. Id. at 18-24.

Along the way, the court also clarified that patent term extensions under the Hatch-Waxman Act apply to the patent itself, not to specific claims within the patent. Id. at 16.


08-290a

Posted On: February 25, 2010

Judge Sue L. Robinson: Complaint Must Set Forth Allegedly Infringing Product or Method

Amend your complaint or face dismissal of your action. This is what Judge Robinson informed the plaintiffs in Eidos Communications, LLC v. Sype Technologies SA, C.A. No. 09-234-SLR, Memo. Op. (D. Del. Feb. 24, 2010), where the complaint failed to allege that any specific product or category of products infringe the patents-in-suit. Plaintiffs in this case alleged that defendants’ “communication system products and/or methodologies” infringe the patents-in-suit. Id. at 2. There are no specific products or methods described in the complaint and the only language that even comes close to such a description is a general description of the technology found in the background section of the complaint. Even that general description, however, “does not indicate whether a product or method (or both) are at issue or whether the suit is directed to the transmission of or to the control of either voice or message data.” Id. at 5. The Court ordered plaintiffs to amend their complaint, finding that “[P]laintiffs were obligated to specify, at a minimum, a general class of products or a general identification of the alleged infringing methods.” Id. at 5.

Eidos Communications, LLC v. Sype Technologies SA, C.A. No. 09-234-SLR, Memo. Op. (D. Del. Feb. 24, 2010).


Posted On: February 25, 2010

Judge Joseph J. Farnan, Jr.: What is "Unpatented" for Purposes of a False Marking Claim?

Is a product “unpatented” for purposes of pleading a false marking claim under Section 292 where it is covered by at least one claim of one of the patents listed on the product’s label? The District of Delaware, following the Federal Circuit decision in Clontech Labs, Inc. v. Invitrogen Corp., 406 F.3d 1347 (Fed. Cir. 2005), found that the for a product to be “unpatented” the product must “not be covered by at least one claim of each patent with which the article is marked.” Brinkmeier v. Graco Children’s Products Inc., C.A. No. 09-262-JJF, Memo. Op., at 7-8 (D. Del. Feb. 16, 2010) (internal citations omitted). Along the same line, marking a product with expired patents can still constitute “actionable mismarking” even if the product is “actually patented.” Id. at 8-9. Therefore, the Court found that plaintiff adequately pled that defendant’s products are “unpatented.” Id. at 9.

Brinkmeier v. Graco Children’s Products Inc., C.A. No. 09-262-JJF, Memo. Op. (D. Del. Feb. 16, 2010).



Posted On: February 25, 2010

Judge Robinson: Claim construction

In Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc., C.A. No. 08-290-SLR (D. Del. Feb. 24, 2010), Judge Robinson recently construed the following claim language of plaintiff's patent:

"truncated Factor VIII Protein which is an active procoagulant"
A Factor VIII protein that promotes blood coagulation and lacks a portion of the amino acid sequence of the human Factor VIII protein.

"having a peptide sequence of human factor VIII:C but lacking a peptide region selected from the group consisting of"
Having the amino acid sequence of the human Factor VIII protein lacking only the particular segment of the human Factor VIII protein in one of the specified alternatives (a), (b) or (c).

Here, plaintiff had argued for a broad interpretation of the claim (i.e., "lacking a peptide region of at least the regions identified in (a), (b) or (c)."). Id. at 3. Plaintiff argued, among other things, that the PTO's granting of a term extension for its patent based on its construction of the relevant claim be given great deference. Id. However, Judge Robinson noted that "[c]laim construction is a matter of law and, therefore, does not fall within the PTO's technical expertise (assuming that the PTO went through the claim construction exercise in the first instance)." Id. at 4.

In Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc., C.A. No. 08-290-SLR (D. Del. Feb. 24, 2010)

Posted On: February 22, 2010

Magistrate Judge Stark: Permissible discovery against defendant may be objectionable as to third party

In ITT Manufacturing Enterprises, Inc. v. Cellco Partnership (d/b/a Verizon Wireless), et al., C.A. 09-190-JJF-LPS (D. Del. Feb. 17, 2010), Judge Stark recently overruled the objections of defendant LG, ordering LG to produce to plaintiff ITT "all non-privileged discovery responsive to ITT's non-CDMA document requests and interrogatories that had previously been withheld on the grounds of lack of good faith factual basis," because the information was relevant to infringment clalims against LG, a manufacturer of phones that operate on CDMA and non-CDMA cellular networks. Id. at 2-3. ITT had also subpoened third party AT&T, operator of a non-CDMA cellular network, seeking the same discovery. Id. at 2. However, Judge Stark granted AT&T's motion to quash because AT&T was not a party and ITT had not alleged infringment of the patent-in-suit. Id. at 3. Moreover, the discovery may be available from LG or other defendants. Id.

ITT Manufacturing Enterprises, Inc. v. Cellco Partnership (d/b/a Verizon Wireless), et al., C.A. 09-190-JJF-LPS (D. Del. Feb. 17, 2010)

Posted On: February 18, 2010

Judge Joseph J. Farnan, Jr.: Privilege Issues

Privilege disputes are often a hot topic of intellectual property litigation. In WebXChange Inc. v. Dell, Inc., Judge Farnan ruled on a number of disputes sounding in the assertion of the attorney-client privilege, attorney work product doctrine and clergy-communicant privilege. C.A. Nos. 08-132-JJF, 08-133-JJF, Memo. Op. (D. Del. Feb. 16, 2010). One dispute involved the assertion of the attorney client privilege as to documents that were described in plaintiff’s privilege log as “notes memorializing confidential communications with counsel.” Id. at 7 (internal citations omitted). The court did not find a waiver of privilege, however, it did require the plaintiff to “supplement its privilege log entries” for all documents that are “drafts of confidential communications made to any attorney, or notes of memos to counsel regarding confidential communications.” Id. Further, plaintiff must “identify the actual communication to an attorney (listed within the privilege log) to which the drafts, notes and memos pertain.” Id. at 8.

Another dispute, involved the plaintiff’s assertion of the clergy-communicant privilege for certain emails that were sent to two Hindu gurus to allegedly obtain legal and spiritual advice concerning the litigation. Id. at 10. Plaintiff further argued that they copied certain third parties on the email “in furtherance of the blessings.” Id. at 11. The court accepted plaintiff’s representations and denied defendants’ motion to compel.

Finally, the court found the crime-fraud exception inapplicable to patent-prosecution documents that were withheld by plaintiff because defendants had not made a prima facie showing of fraud. Specifically, the court found that a mere restatement of the defendants’ inequitable conduct allegations is not sufficient to overcome the assertion of the attorney-client privilege based on this exception. Id. at 12-13.

WebXChange Inc. v. Dell, Inc., C.A. Nos. 08-132-JJF, 08-133-JJF, Memo. Op. (D. Del. Feb. 16, 2010).


Posted On: February 17, 2010

New District of Delaware Intellectual Property Case Filings

1/3: Brinkmeier v. Bayer Healthcare LLC (patent infringement)
1/5: Cephalon Inc. and Cephalon France v. Watson Pharmaceuticals Inc., Watson Laboratories Inc. and Watson Pharma Inc. (patent infringement)
1/5: Enova Technology Corp. v. Initio Corp, Initio Corp. (California) and Western Digital Corporation (patent infringement)
1/5: Southco Inc. v. Penn Engineering & Manufacturing Corp. (patent infringement)
1/6: Zodiac Pool Care Inc. v. Aquatron Inc. and Aqua Group LLC (patent infringement)
1/7: AstraZeneca Pharmaceuticals LP, AstraZeneca UK Limited and AstraZeneca AB v. Teva Parenteral Medicines Inc., Teva Pharmaceuticals USA Inc. and Teva Pharmaceutical Industries Ltd. (patent infringement)
1/8: Allergan Inc. v. Sandoz Inc. (patent infringement)
1/8: Alza Corporation and Ortho-McNeil-Janssen Pharmaceuticals Inc. v. Kremers Urban LLC and KUDCO Ireland Ltd. (patent infringement)
1/14: Boram Pharm. Co. Ltd. v. Life Technologies Corp. (patent infringement)
1/14: Daiichi Sankyo Inc.and Genzyme Corporation v. Impax Laboratories Inc. (patent infringement)
1/15: Cordis Corp. v. Boston Scientific Corp. and Boston Scientific Scimed Inc. (patent infringement)
1/15: Pfizer Inc., Pharmacia Corp., Pharmacia & Upjohn Co., Pharmacia & Upjohn LLC, Pharmacia & Upjohn Company LLC, et al. v. Teva Parenteral Medicines Inc., Teva Pharmaceuticals USA Inc. and Teva Pharmaceutical Industries Ltd. (patent infringement)
1/21: Galderma Laboratories LP, Galderma SA and Galderma Research and Development SNC v. Tolmar Inc. (patent infringement)
1/21: Infineon Technologies AG v. Volterra Semiconductor Corp. (patent infringement)
1/21: Purdue Pharma Products LP and Napp Pharmaceutical Group Ltd. v. Lupin Ltd. and Lupin Pharmaceuticals Inc. (patent infringement)
1/22: Abbott Laboratories and Abbott Respiratory LLC v. Teva Pharmaceuticals Industries Ltd. and Teva Pharmaceuticals USA, Inc. (patent infringement)
1/22: Cephalon Inc. and Cephalon France v. Sandoz Inc. (patent infringement)
1/25: PCT International Inc. v. John Mezzalingua Associates Inc. (patent infringement)
1/26: Tarkus Imaging Inc. v. Adobe Systems, Inc., Canon USA, Inc., Nikon Americas Inc. and Nikon Inc. (patent infringement)
1/27: Kwikset Corp. and Newfrey LLC v. Schlage Lock Company LLC (patent infringement)
1/28: Broadridge Financial Solutions, Inc. v. Inveshare Inc. (patent infringement)
1/29: St. Clair Intellectual Property Consultants Inc. v. Google Inc. (patent infringement)
2/1: Armstrong World Industries Inc. v. Congoleum Corp. (patent infringement)
2/2: Carl Zeiss Meditec Inc. and University of Miami v. Optovue Inc. (patent infringement)
2/3: Pfizer Inc., Pfizer Pharmaceuticals LLC, Pfizer Ireland Pharmaceuticals, Pfizer Limited and CP Pharmaceuticals International CV v. Mylan Pharmaceuticals Inc. (patent infringement)
2/4: MAM Babyartikel GmBH, Bamed AG and MAM USA Corporation v. Sesame Workshop (patent infringement)
2/5: QVC Inc. and QHealth Inc. v. Your Vitamins Inc. and Andrew Lessman (trademark infringement)
2/9: Pfizer Inc., Pfizer Pharmaceuticals LLC, Pfizer Ireland Pharmaceuticals, Pfizer Limited and CP Pharmaceuticals International CV v. Sandoz Inc. (patent infringement)
2/9: Sandoz Inc. v. Pfizer Inc., Pfizer Pharmaceuticals LLC, Pfizer Ireland Pharmaceuticals, Pfizer Limited and CP Pharmaceuticals International CV, Warner-Lambert Company and Warner-Lambert Company LLC (patent infringement)

Posted On: February 15, 2010

Federal Circuit: Questionable Personal Jurisdiction Warrants Transfer

Among the many considerations that courts face when deciding whether to transfer an action, especially in an era of ever-expanding dockets, judicial economy can sometimes tip the balance. In a recent order, the Federal Circuit upheld a D. Del. decision that sent the underlying ANDA case to another district. Of the several reasons cited, the Court approved the district court's rationale for avoiding a potentially unnecessary round of discovery:

"In this case, the Delaware District Court ruled that 'substantial, unresolved questions remain with regard to whether this District has personal jurisdiction over Defendant Apotex . . . ' and stated that it would not exercise jurisdiction over Apotex without jurisdictional discovery. Under these circumstances, we cannot say that the Delaware District Court clearly abused its discretion in ruling that judicial economy and the interest of justice weighed strongly in favor of transfer."

In re Pfizer Inc., Misc. Docket No. 915 (D. Del. Feb. 2, 2010) (Horbaly, Clerk, for the Court).


Posted On: February 11, 2010

NJ District Court Reverses Opinion that Contradicted DE Opinion

Last month, we posted about New Jersey Magistrate Judge Bongiovanni's decision to disqualify a lawyer for a conflict of interest under Rule of Professional Conduct 1.7, in Wyeth and Cordis Corp. v. Abbott Laboratories, et al., C.A. No. 08-230-JAP (D.N.J. Dec. 1, 2009). Magistrate Judge Bongiovanni's holding contradicted a District of Delaware case - both cases had identical facts, but Magistrate Judge Bongiovanni held the firm disqualified, while Judge Robinson had held that, although the firm's conduct violated Rule 1.7, the facts of the case did not warrant disqualification.

This week, New Jersey District Judge Pisano reversed Magistrate Judge Bongiovanni's decision, and held that the attorney was not disqualified, after a discussion of the facts of the case that roughly mirrored Judge Robinson's opinion. According to Judge Pisano, violations of Rule 1.7 do not result in mandatory disqualifiction under Third Circuit and New Jersey law. Wyeth and Cordis Corp. v. Abbott Laboratories, et al., C.A. No. 08-230-JAP, at *15 (D.N.J. Feb. 8, 2010). Judge Pisano stated that this rule is particularly appropriate because "[m]odern litigation . . . often involves multinational companies and multinational law firms among whom conflicts occasionally arise due to the broad reach of their respective businesses," and because of the degree of prejudice that results to a party when its chosen counsel is disqualified. Id. at 9-10.

08-cv-00230

Posted On: February 6, 2010

Magistrate Judge Thynge: Opinion on Inline JMOL motion

Magistrate Judge Thynge recently issued an opinion in Inline Connection Corporation v. Earthlink, C.A. No. 02-272-MPT (D. Del. Feb. 5, 2010). The opinion addressed several issues (see full opinion below); one interesting issue involved the law regarding a "practicing the prior art" defense.

In this case, the jury found that the patent was both invalid and not infringed. Id. at 11. The patentee sought to rescue their patent via a motion for judgment as a matter of law (JMOL) that the patent was not invalid, because the defendant's expert had failed to "identify each claim element, state the witnesses' interpretation of the claim element, and explain in detail how each claim element is disclosed in the prior art reference," as required by Koito Mfg. Co., Ltd. v. Turn-Key-Tech, LLC, 381 F.3d 1142, 1152 (Fed. Cir. 2004). Id. at 21. The Court agreed.

Defendant Earthlink then tried to put on a "'practicing the prior art' defense," arguing that "its [product] is “materially identical” [to the prior art] and, thus, 'if [its product] were found to infringe, then the patent claims that are at issue would have to be invalid,'" but the Court disagreed. The Court pointed out that "[t]he Federal Circuit [has] stated that 'this court has made clear that there is no ‘practicing the prior art’ defense to literal infringement," Koito at 1153, and that all of the other cases cited by Earthlink for its "practicing the prior art" defense involved situations where the accused product was the prior art - i.e., it was invented or on sale before the priority date. Thus, the Court granted the JMOL motion.

This shows that you should not rely on a pure "practicing the prior art" defense, despite its apparent logic (after all, how can a patentee have patented something that existed in the prior art?), unless your actual product is the prior art.

Inline Connection Corporation v. Earthlink, C.A. No. 02-272-MPT (D. Del. Feb. 5, 2010)

Posted On: February 4, 2010

Eduardo C. Robreno: Always Read the Footnotes

Sometimes, the footnotes tell the whole story. In this case, that expression is literally true: district judge Eduardo C. Robreno's recitation of the facts and his analysis are contained within one extraordinary footnote. That analysis, moreover, is significant.

In its decision released Tuesday, the Court delineated the scope of pleading, on information and belief, the "deceptive intent" element of the inequitable-conduct defense. In short, the answer is no:

"Even assuming that the Court adopts a liberal interpretation of the inference of intent to deceive, Defendants present no specific facts showing Plaintiff . . . actually possessed any knowledge with respect to the commercial availability of the Components. Absent some particularized showing regarding this knowledge, the Amended Answer does not satisfy the Rule 9(b) pleading requirement in light of [Federal Circuit precedent]."

Inventio AG v. Thyssenkrupp Elevator Americas Corp., C.A. No. 08-874-ER (D. Del. Feb. 2, 2010) (Robreno, J., sitting by designation).

Posted On: February 4, 2010

Judge Farnan: Motion to Transfer Denied in ANDA Case

In Pfizer, Inc. v. Sandoz, Inc., C.A. No. 09-742-JJF (D. Del. Jan. 20, 2010), Judge Farnan explained a recent trend among Delaware ANDA plaintiffs: when jurisdiction in Delaware is not a sure thing, ANDA plaintiffs will bring suit in Delaware, and then immediately bring a second suit in another "safe" forum where jurisdiction is assured. Id. at 12. Plaintiffs feel that they must do this because, under the Hatch-Waxman Act, they have only a 45-day window in which to bring suit once they receive notice of an ANDA filing, and the statute is silent on what happens if the suit that they bring within the window is dismissed for lack of jurisdiction. Id. To be avoid that potential problem, plaintiffs have been hedging their bets by bringing two suits. Id.

In this particular case Pfizer, a Delaware corporation with its principal place of business in New York, brought an ANDA suit against Sandoz, Inc., a Colorado corporation with its principal place of business in New Jersey, but also with its primary manufacturing plant located in Colorado. Id. at 3. Pfizer first brought suit in Delaware, and then a day later brought suit in Colorado. Id. Sandoz filed answers and counterclaims for declaratory judgment in both jurisdictions, and brought the present motion to transfer to Colorado. Pfizer responded with a motion in Delaware to enjoin the declaratory judgment action in Colorado. Id.

Luckily for Pfizer, Judge Farnan seemed to understand their concerns as ANDA plaintiffs. After describing the parties' ordinary arguments for and against Pfizer's choice of forum, id. at 4-5, Judge Farnan explained the need, as other courts have noted, for plaintiffs to bring ANDA cases in a "safe" forum in addition to their preferred forum because of the statute's lack of clarity. In light of that need, and because the other factors were each neutral, Judge Farnan held that Pfizer's choice of forum takes precedence, and denied Sandoz's motion to transfer. Id. at 6-16. Judge Farnan reserved decision on Pfizer's motion to enjoin the declaratory judgment action in Colorado, however, pending the Colorado court's resolution of similar motions to transfer. Id. at 16.

Pfizer, Inc. v. Sandoz, Inc., C.A. No. 09-742-JJF (D. Del. Jan. 20, 2010)

Posted On: February 3, 2010

New opinion from Delaware Court of Chancery on Trade Secret Misappropriation

In a recent case before Vice Chancellor Parsons of the Delaware Court of Chancery, Plaintiff Great American brought claims against Defendant Cherrydale for, among other things, misappropriation of trade secrets. Great American Opportunities, Inc. v. Cherrydale Fundraising, LLC et al., C.A. No. 3718-VCP (Del. Ch. Jan. 29, 2010). The action stemmed from events that occurred around the acquisition of Kathryn Beich, Inc. (“KB”) by Great American. The trade secrets in question involved a list of sales representatives and their contact information; a list of KB sales representatives ranked by volume of sales; order status reports, which listed contact information and the status of KB orders; and other confidential proprietary reports, customer contact and purchasing information. Id. at 11-14. Cherrydale argued that this information did not constitute trade secrets and were not misappropriated because the “information was used solely by independent contractors whose acts cannot be attributed to Cherrydale.” Id. at 45.

Under the Delaware Uniform Trade Secrets Act, the plaintiff must prove: (1) “that a trade secret exists, i.e., the statutory elements—commercial utility arising from secrecy and reasonable steps to maintain secrecy—have been shown;” (2) “that the plaintiff communicated the trade secret;” (3) “that such communication was made pursuant to an express or implied understanding that the secrecy of the matter would be respected;” and “(4) that the trade secret has been used or disclosed improperly to the plaintiff’s detriment.” Id. at 46-47. After weighing the evidence presented at trial, Vice Chancellor Parsons determined that the information at issue were protected trade secrets. Id. at 48-67. However, because Great American failed to prove the amount of actual damages it was entitled to, Vice Chancellor Parsons awarded Great American compensatory damages only for Cherrydale’s unjust enrichment caused by the misappropriation. Id. at 68-78. Cherrydale’s actions were, however, found to be willful and malicious leading Vice Chancellor Parson’s to double the compensatory damages award. Id. at 82.

Great American Opportunities, Inc. v. Cherrydale Fundraising, LLC et al., C.A. No. 3718-VCP (Del. Ch. Jan. 29, 2010)

Posted On: February 3, 2010

Judge Joseph J. Farnan, Jr.: Expert Testimony Allowed Under Liberal Third Circuit Standard

Following the Third Circuit's "liberal" approach to the admission of expert testimony, the Court found that the defendant's trade secret expert was qualified to testify regarding the electrochemistry field. Roche Diagnostics Operations, Inc. v. LifeScan Inc., C.A. No. 07-753-JJF, Memo. Order (D. Del. Jan. 29, 2010). Specifically, the Court held that the proffered expert's "education, academic endeavors, and publications demonstrate a substantial level of expertise." Id. at 2. Plaintiff argued that the expert had no prior experience or skills in the technical area at issue and therefore was unqualified to testify as to defendant's trade secret misappropriation counterclaims. Id. at 1.

In the same case, a jury recently found for plaintiffs on defendant's breach of contract and unfair competition counterclaims. See verdict sheet here.

Roche Diagnostics Operations, Inc. v. LifeScan Inc., C.A. No. 07-753-JJF, Memo. Order (D. Del. Jan. 29, 2010).