The District Court of Delaware has issued amended Local Rules (Civil) which become effective April 30, 2010. The majority of changes bring the Local Rules in line with the 2009 amendments to the Federal Rules of Civil Procedure that deal with computation of time.
One of the bigger changes is in Rule 7.1.3 and deals with the length of briefs. All opening and answering briefs are now limited to 20 pages and all reply briefs to 10 pages (exclusive of any table of contents or table of authorities).
Rule 7.1.5 also limits motions for reargument to 10 pages. Rule 7.1.5 has also been amended to state that a party seeking review of an order, decision or report and recommendation of a Magistrate Judge must file objections under Fed. R. Civ. P. 72 and cannot file a motion for reargument before either the Magistrate Judge or the District Court Judge.
All depositions must now be notice at least 10 days prior the date of the deposition. D. Del. LR 30.1.
In Masimo Corporation v. Philips Electronics North America Corporation, defendant Philips filed a motion for leave to amend its counterclaims pursuant to Federal Rule of Civil Procedure 15 to add a newly acquired patent. C.A. No. 09-80-JJF-MPT, Memo. Order (D. Del. Apr. 20, 2010). Plaintiff argued that this motion to amend was actually an attempt to supplement the pleadings because it was adding a patent that was unrelated to the asserted patents and further was an attempt by defendants to "'buy up' new counterclaims and hinder litigation of [plaintiff's] claims." Id. at 4 (internal citations omitted).
The Court did treat the motion as a motion to supplement and not a motion to amend, but found that the standard under Rule 15(d) is "'essentially the same' as that under Rule 15(a)." Id. at 5 (internal citations omitted). Using that standard, the court found that the newly-added patent is potentially related and inclusion of the patent in the pending litigation "will promote judicial efficiency" since the accused products were already accused of infringing defendants' other asserted patents in the pending litigation. Id. at 6-7. Judge Thynge also found that inclusion of the newly-added patent in the pending litigation would not cause undue delay since no scheduling order had been entered and discovery was in its early stages. Id. at 7. Finally, the court found that there was no evidence to support a finding that defendants acted in bad faith when moving to add the newly-acquired patent. Id. at 8.
A jury returned a mixed verdict on Friday, April 23, in the patent infringement suit between Robert Bosch, LLC v. Pylon Manufacturing Corp. C.A. No. 08-542-SLR, Verdict Sheet (D. Del. April 23, 2010).
There were three patents-in-suit, all relating to wiper blade technology. The first patent asserted by plaintiff is entitled "Glass Wiper Blade for Motor Vehicles" (U.S. Patent No. 6,292,974). The jury found that the asserted claims were invalid in light of two prior art references. It also found this patent invalid because one or more of the named inventors did not himself invent the subject matter but learned of it from another.
The jury found that the accused Bosch products infringed certain claims of the second patent entitled "Wiper Blade for the Glass Surfaces of Motor Vehicles with an elongated, spring-elastic support element" (U.S. Patent No. 6,675,434). It also found, however, that one claim was not infringed. The jury found that two of infringed claims were obvious in view of two U.S. patents and that one of the remaining infringed claims and the non-infringed claim were valid.
The jury found the third patent, U.S. Patent No. 6,944,905, entitled "Wiper blade for cleaning screens in particular on motor vehicles." to be infringed and valid.
Of note in this case, the verdict form contained quite a bit of detail compared to a typical verdict form in this district. The redacted form is set forth below.
As we previously mentioned in an earlier blog post, Magistrate Judge Leonard P. Stark has been nominated by President Obama to fill the current D. Del. vacant judgeship. (see post here) The Senate Judiciary Committee held a confirmation hearing last Thursday, April 23, 2010 regarding his nomination. The committee members may still provide written questions to Magistrate Judge Stark before the committee votes. The nomination must be approved by the full committee and then confirmed by the full Senate.
For a more comprehensive recap of the hearing, below is a link to the Delaware News Journal Article of April 24, 2010.
Note to Counsel: Remember your duty of candor to the tribunal. In a recent post-trial findings of fact and conclusions of law, Chief Judge Gregory M. Sleet noted in a footnote the following:
“Santarus asserts that Dr. Allen, one of Par’s expert witnesses testified that ‘there are substantial differences between omeprazole and leminoprazole.’… This is, at best, a highly misleading statement and is one of the more egregious examples of the distortions of the record contained in Santarus’ post-trial briefing. The portion of the transcript that Santarus cites for its characterization of Dr. Allen’s testimony contains two questions that call for some comparison between leminoprazole and omeprazole. The first question and its response consisted of the following:
Q. You would agree that Laminoprazole is substantially different from omeprazole; correct?
A. It is a ben—
Q. Thank you, sir.
Tr. 710:19-22. The second question, as reworded after an objection by Par’s counsel, discussed a hypothetical, abstract patent containing leminoprazole and asked whether, for the purposes of doctrine of equivalents rather than non-obviousness, the substitution of omeprazole would constitute a ‘substantial difference’ such that it would not infringe under the doctrine of equivalents. (Tr. 711-25.) To that abstract, hypothetical question concerning a wholly different area of patent law, Dr. Allen answered “I believe that is true. Id. at 712:1. The court is trouble that on this basis, Santarus asserts in the context of its obviousness argument that Dr. Allen ‘testified’ that leminoprazole and omeprazole were substantially different.
Sadly, such distortions are not confined to these examples – both at trial and in the post-trial briefing. At trial, counsel for Santarus implied that one of Par’s witnesses was ‘embarrassed’ by his opinion in this case based on the witness’s statement during deposition that he hoped the confidentiality of his participation in the case would be respected… In its proposed findings of fact and conclusions of law, Santarus’ counsel represented to the court that Dr. Orlando was unable to explain the meaning of an article at trial… Counsel neglects to mention, however, that the testimony cited was in response to a question that counsel withdrew after Dr. Orlando asked to see the context in question… Furthermore, both parties’ briefs cite portions of the transcript that provide no support for the propositions for which they are cited. These tactics make it far more difficult and time-consuming for the court to examine the record when preparing its findings of fact and conclusions of law. Both the court and the parties suffer undue inconvenience when counsel engages in such tactics. Equally important, counsel who engage in such sharp practices run the risk of severely damaging their credibility and, thus, their effectiveness in the place and at the time when they most need to be viewed as honest and ethical brokers of the facts and the law.
Santarus, Inc. v. Par Pharmaceutical, Inc., C.A. No. 07-551-GMS, Memo., at 35 n.10 (D. Del. Apr. 14, 2010).
This opinion follows a series of discovery disputes between the parties surrounding requests for production of documents concerning drugs other than the drug that is the subject of the plaintiffs’ NDA, defendant Mylan’s ANDA and the patent-in-suit. Eurand, Inc. v. Mylan Pharmaceuticals, Inc., C.A. No. 08-889-SLR, Memo. Order (D. Del. Apr. 13, 2010) (Thynge, Magistrate) (see prior opinion and post here). As part of its Second Amended Answer, defendant Mylan asserted the affirmative defense and counterclaim of inequitable conduct alleging that Mylan failed to disclose another material patent during the examination of the patent-in-suit. Mylan sought to discovery documents “evidencing the two inventors’ awareness of and understanding of” certain pieces of prior art during the period prior to and during the filing and prosecution of the patent-in-suit. Id. at 3.
Mylan’s Second Amended Answer asserted a claim of inequitable conduct solely based on one piece of prior art, a U.S. patent. Mylan also sought documents, however, related to two other references that were not mentioned in its Answer, but Mylan argued were relevant to plaintiffs’ subjective intent. Id. at 8-10. Such discovery was necessary, Mylan argued, before it could assert additional claims of inequitable conduct under Rules 9 and 11. Judge Thynge held that “[i]t is improper to use discovery in search of a factual predicate required to be pled in the first instance.” Id. at 10.
However, as to the documents sought to establish knowledge and intent related to the U.S. patent that Mylan did plead in its counterclaim and affirmative defense, those documents are relevant and should be produced. Plaintiffs argued that they conducted a thorough search of all relevant files including all development and product files related to the drug claimed in the patent-in-suit and those files would have encompassed the prior art sought by Mylan. Id. at 5, 11. They further argued that the proposed search by Mylan of the emails of the two inventors would “involve review of a large number of potential emails and substantial expense…and contains terms that have nothing to do with the present inequitable conduct claim.” Id. at 11. Noting the hesitancy of the court to opine on such “mysteries of keyword search techniques,” the court stated that it in determining the “adequacy” of search terms or methodology, a reasonableness test is applied. It further found that plaintiffs’ search of materials related to the drug claimed in the patent-in-suit “did not include keywords on the inventors’ knowledge or awareness of the materiality of the [prior art] patent” and that “[s]uch knowledge under the circumstances…would most likely be found in the emails of the inventors.” Id. at 13. Therefore, the court ordered plaintiffs to search and produce all emails that “are relevant to the inventors’ knowledge and materiality of the [prior art] patent to the [patent-in-suit] and failure to disclose the [prior art] patent during the prosection of the [patent-in-suit]” during the period from the filing of the [prior art] patent to the date of issuance of the [patent-in-suit].” Id. at 14.
Plaintiffs Schering-Plough HealthCare Products, Inc. (makers of Coppertone-brand sunscreen) brought an action under Section 43 of the Lanham Act against Neutrogena Corporation (makers of Neutrogena-brand sunscreen) for releasing advertisements containing false and misleading statements. Defendants counter-claimed under the Act based on advertisements by Plaintiffs.
Defendant's advertisements involved a bar graph showing "UVA" and SPF ratings for the competing products:
Plaintiffs argued that the graphs were misleading, and the Court agreed, based on the literal falsity of the graph's "double-counting" of UVA protection. The upper, yellow portion of the graph represents the sunscreen's UVA protection, while the bottom, red portion of the graph represents the SPF rating. According to the Court, however, the red portion of the graph is based on an SPF measurement that already accounts for UVA protection. Thus, by adding the yellow portion of the graph, Defendants were double-counting their UVA protection, which was literal falsity. The Court was unpersuaded by Defendants' argument that the falsity affected the graphs of both products: "While it is true that these errors are present with respect to both products compared in the graph, the absence of bias caused by the double-counting does not eliminate the falsity of the message." Id. at 12.
Defendants asserted a counterclaim based on claims made in Plaintiff's TV ads. The ads involved an establisment claim that Plaintiff's sunscreen provided "better coverage," as well as text apparently asserting that Defendant's spray sunscreen consisted of "28% Propellant":
The Court held in favor of Defendants on both claims. For the establishment claim, the Court held that Plaintiffs had failed to actually test the properties of the products in the ad, and that "[t]his type of unsubstantiated 'scientific' claim is precisely what the Lanham Act seeks to prevent." For the "28% Propellant" statement, the Court held that
"The overlay of the words "Neutrogena" and "28% propellant" on the (bare) chest of one of the athletes (as compared to, for example, pictures of the respective cans) reinforces the message that 72% sunscreen and 28% propellant is applied to the body, rather than merely contained inside the can. There is no qualifying statement or language from which a consumer could conclude that the propellant is not deposited onto the skin in this amount or, alternatively, that the sunscreen (lotion) expelled by the can is 100% (and not 72%) sunscreen. This is an unambiguous message conveyed by necessary implication and, therefore, is literally false."
In Millenium Pharms., Inc. v. Teva Parenteral Medicines, Inc., C.A. No. 09-105 (D. Del. Apr. 13, 2010), Plaintiffs brought suit after defendants filed their Abbreviated New Drug Application (“ANDA”) for a generic version of Plaintiffs’ drug. Id. at 2. Pursuant to their ANDA, Defendants submitted a Paragraph IV certification that Plaintiffs’ patents in the corresponding New Drug Application (“NDA”) were invalid, unenforceable or would not be infringed. Id. at 3-4. Due to Defendants’ Paragraph IV certification, Plaintiffs had 45 days to bring the suit to establish validity of their patents (which they did), thereby staying Defendants ANDA for 30-months. Because Defendants were the first to file a Paragraph IV certification, they are entitled to a 180-day market exclusivity after ANDA approval, provided Defendants begin marketing their generic drug within 75 days of a final judgment that Plaintiffs’ patents are invalid, unenforceable, or not infringed. In addition to the Paragraph IV certifications, Defendants submitted Paragraph III certifications which would delay FDA certification of Defendants’ ANDA until Plaintiffs’ patents expire, in 2014. The result was that Defendants could lose their 180-day exclusivity period, even if they are successful in the litigation. Id. at 5. Therefore, Defendants subsequently sought a stay of the litigation.
Judge Joyner denied Defendants’ Motion to Stay, however, after weighing the potential hardships to both Plaintiffs and Defendants. Judge Joyner noted that “Defendants have shown that they will be harmed if a stay is not entered, as they will likely forfeit their 180-day exclusivity period. Defendants, however, have only themselves to blame for this result. . . . Although Defendants did not file this suit, they were well aware that their ANDA triggered the start of a 45-day period for Plaintiffs to defend the validity of their patents, and, in this sense, did control the timing of the present litigation.” Id. at 8. Because the harm to Defendants of denying the stay was “one of their own creation,” that harm cannot outweigh any harm to Plaintiffs if the stay is granted. Id.
Magistrate Judge Stark denied defendant's request for entry of a 60 day stay based on a "drastic downturn in [defendant's] financial outlook." Aerocrine AB v. Apieron, Inc., C.A. No. 08-787-LPS, Order Regarding Request for Stay, at 1 (D. Del. Mar. 30, 2010). A court has discretion to enter a stay because of financial hardship on one of the parties. Id. at 1. Finding that there are hardships for both parties, including potential bankruptcy for the defendant and for plaintiffs, the possibility that defendant will continue to infringe the asserted patents and delay of resolution of this litigation which has been pending since 2008, the court chose to deny the stay. "Ultimately, [plaintiff] prefers to proceed with this litigation at the risk that doing so will force [defendant] to file for bankruptcy protection, rather than have the instant action stayed in hopes that the proposed asset sale will be consummated and permit [defendant] to proceed with the litigation." Id. at 2.
In addressing various motions in limine filed in a case set to be tried to the bench this month, Judge Farnan denied the pending motions in limine all addressing the exclusion of evidence at trial. UCB, Inc. v. KV Pharmaceutical Co., C.A. No. 08-223-JJF, Memo. Op. (D. Del. Mar. 9, 2010). In one motion, plaintiffs sought to preclude the defendant from asserting its on-sale bar defense because they did not assert such a defense during discovery. The court denied the motion, finding that plaintiffs did not demonstrate any "actual harm or prejudice" they will incur if the defense is allowed. Furthermore, plaintiffs could not point to any specific discovery they were unable to complete, and in fact responded to defendant's motion for summary judgment on the issue. Id. at 6.
Judge Farnan denied another pending motion in limine on similar grounds finding that defendant was timely in asserting a specific non-infringement defense where it argued the general theory in summary judgment and claim construction. The court found that the issue has long been known and the fact that the "precise" argument was not "expressly disclosed" did not warrant granting the motion. Id. at 8.
In a case involving technology relating to wiper blades, Judge Robinson recently issued a claim construction order construing the terms set forth below:
- "mounted to said concave surface of said support element"
- "mounted directly to the convex surface of said support element"
- "a leading edge face"
- "wherein each crosspiece disposed at the end sections of the two spring stripes is provided with a covering cap"
- "groove-like construction"
- "a wiper blade part"
- "wind deflection strip is disposed between and in contact with each respective end cap and the device piece"
- "base body"
- "bracing itself on the wiper blade"
- "detent shoulder"
- "pointing toward the other end portion"
- "protrusions protuding;" "a protusion protruding"
- "long sides;" "long sides of the support element"
- "hook legs"
- "detent tooth that protrudes from the long side of the support element"
- "the face of the end of the support element"
- "inside wall"
- "pin passage"
- "tail space"
- "forwardmost free end"
- "rearward of said pin passage and said rivet passage"
- "rail-free hook insertion space"
- "engagement tab"
- "outward lateral extent"
Interestingly, the court refused to construe the phrase "wherein said leading edge face is disposed on a face of said support element which faces away from the window" because the "phrase is unsupported by the specification and has no apparent plain meaning. Robert Bosch, LLC v. Pylon Manufacturing Corp., C.A. No. 08-542-SLR, Memo. Order, at 3 (D. Del. Mar. 30, 2010).
In Fuzzysharp Technologies, Inc. v. Nvidia Corp. et al., C.A. No. 09-872 (D. Del. April 6, 2010), Plaintiff filed suit after filing seven separate patent infringement actions, involving the same patents, against multiple defendants in the Northern District of California. Id. at 1. Defendants moved for transfer to the Northern District of California after, in one of the cases, the district judge decided summary judgment invalidating the patents-in-suit under In re Bilski, 545 F.3d 943 (Fed. Cir. 2009). Judge Robinson considered “whether it makes sense for this court to keep the case at bar, necessarily imposing a stay pending the Supreme Court’s review of In re Bilski and/or the Federal Circuit’s Review of [plaintiff’s related case].” Id. at 2. Judge Robinson determined that due to the prior filings in the Northern District of California and the “unusual circumstances[,]” transfer was warranted. Id.
In Brigham and Women’s Hospital Inc., et al. v. Teva Pharmaceuticals USA, Inc., et al., C.A. 08-464 (D. Del. Mar. 31, 2010), Judge Bartle considered whether the attorney-client privilege was waived by plaintiffs when answering certain of defendants’ interrogatories relating to defendants’ inequitable conduct counterclaims. Id. at 4-5. When answering the interrogatories, plaintiffs indicated that they relied on advice of counsel to determine what material was disclosed to the patent office during prosecution of the patents in question. Id. at 5-8. Defendants argued that plaintiffs “relied on advice of counsel as a ‘sword’ to defeat the intent prong of inequitable conduct[,]” but were also “improperly attempting to use attorney-client privilege as a ‘shield’ to deflect inquiry into [related] communications.” Id. at 8-9.
Judge Bartle first determined that Federal Circuit law on attorney-client privilege applied, rather than Third Circuit law, because the privilege issue was “closely related to the substantive issue of inequitable conduct[,]” which is within the realm of the Federal Circuit. Id. at 9-10. Although the Federal Circuit has not decided the issue of waiver in the context of the use of advice of counsel as a defense to inequitable conduct, Judge Bartle looked to cases involving willful infringement. Id. at 11. In the willful infringement context, the Federal Circuit has clearly established, “that a litigant who asserts reliance of the advice of counsel as a defense waives the attorney-client privilege with regard to all communications pertaining to that advice.” Id. at 12. Likewise, Judge Bartle determined that reliance on advice of counsel as a defense to inequitable conduct results in waiver of the attorney-client privilege as to communications between lawyer and client relating to plaintiffs’ failure to disclose certain information to the patent office. Id. at 16.
Yesterday, Judge Robinson issued an opinion in Pernod Ricard USA LLC v. Bacardi U.S.A., Inc., C.A. No. 06-505-SLR (D. Del. Apr. 5, 2010). Plaintiff Pernod alleged that Bacardi "made false and misleading representations concerning the geographic origin of its 'Havana Club'-branded rum in violation of Section 43(a) of the Lanham Act." Id. at 1. The Court noted the lack of caselaw regarding the meaning of "geographic origin," and that the term is susceptible to two interpretations: place of present production, or place of historical origin / "heritage." In other words, does a "Havana Club" rum have to be presently manufactured in Cuba, or merely manufactured using a Cuban recipe by a company with Cuban roots?
After a brief discussion of the caselaw, the Court avoided the issue, holding that the Bacardi rum is not misleading on either count. It accurately displays "Puerto Rican Rum" or "crafted in Puerto Rico" on both sides of the bottle, id. at 16-19, and the Bacardi company and its rum recipe both have a Cuban heritage. Id. at 19-20. Plaintiffs argued that Bacardi had changed the recipe, negating the Cuban heritage; the Court recognized that there had been minor modifications to the recipe, but that the resulting product was almost identical. Id. at 21. Regarding any minor taste differences in the resulting product, according to the Court, "As the expression goes, 'if it looks like a duck, swims like a duck and quacks like a duck, then it probably is a duck.'" Id. at fn. 23. The Court also twice noted, on pages 20 and 21, that "The First Amendment protects defendant's ability to accurately portray where its rum was historically made - as opposed to claiming that the product is still made there."
Last August, we wrote about Judge Robinson's reversal a 2002 inequitable conduct decision in one of the Cordis Corp. v. Boston Scientific cases. Judge Robinson had initially found the two asserted patents invalid for inequitable conduct. Cordis appealed, won on appeal, and then prevailed again on remand. Boston Scientific then filed a motion for reconsideration, and Judge Robinson issued a memorandum opinion on Thursday addressing the motion. Cordis Corp. v. Boston Scientific Corp., C.A. No. 98-197-SLR (D. Del. Mar. 31, 2010)
Boston Scientific asserted that "the Federal Circuit's mandate clearly limited the court's inquiry on remand 'only to supplement and explain its prior findings on deceptive intent and taint," id. at 4, and that the Court "did not address all of the questions posed by the Federal Circuit," id. at 6. The Court disagreed on both counts, essentially holding that if the Federal Circuit had mandated that it review its prior findings, it must also be able to change its prior conclusion; a contrary interpretation would "leave the court in the untenable position of submitting for appellate review a factual record which is starkly inconsistent with the court's previous legal determinations." Id. The Court further held, as far as addressing individual questions, that its analysis did not deviate from the Federal Circuit's mandate.
Boston Scientific further argued that reversal as to one of the two patents was improper, because Cordis had failed to appeal the holding as to that patent. The Court again disagreed, holding that "Irrespective of Cordis' failure to explicitly place the enforceability of the . . . patent at issue [on appeal], the Federal Circuit's mandate directing the court to engage in a factual inquiry regarding deceptive intent - relevant to the enforceability of [both] patents - implicitly does so." Id. at 6-7.
In it, Magistrate Judge Stark dealt with a motion to compel depositions of various foreign inventors of asserted patents. Defendant Aperion moved to compel Aerocrine to produce each of 8 foreign inventors for depositions in the U.S. The Court granted four of the motions, and denied four. The inventors shared certain characteristics: all of them were co-inventors of a patent in suit, each was a co-founder of Aerocrine, and each had assisted with production. The deciding factor was the degree of control that Aerocrine could assert over the inventors. The Court granted the motion to compel as to the inventors who were either still working for Aerocrine as officers or directors, or who signed patent assignment agreements specifically requiring that they be available testify in relation to these patents.
Magistrate Judge Stark recently issued a memorandum order in Aerocrine AB v. Apieron Inc., C. A. 08-787-LPS (D. Del. Mar. 30, 2010). The order granted a motion by plaintiff Apieron to amend their complaint to add inequitable conduct allegations, and denied defendant Aerocrine's motion for judgment on Apieron's pleadings alleging inequitable conduct.
The inequitable conduct allegations arose from the deposition of a non-party scientist in the field of the patents. The scientist explained that he had performed research directed to the same subject matter of the patents, and prior to their earliest filing date. The scientist also stated that he had presented his research at a conference attended by the inventors of the asserted patents, and that "it would be 'hard for [him] to imagine' that [one of the inventors] was not aware of his work, because [they] went to meetings together between 1993 and 1999, 'knew each other and talked about [the research].'" Id. at 5. According to the proposed amendment to the complaint, the inventors knew of the research presented at the conference, and the research anticipates every element of at least one (specific) claim of each of the patents. None of the inventors disclosed the research to the patent office.
The Court granted the motion to amend the complaint, because it "was filed less than a month after Apieron took [the scientist's] deposition and became aware of the basis for its allegations of inequitable conduct," and there was no undue prejudice or evidence of bad faith or a dilatory motive in their conduct. The Court also denied Plaintiff's opposing motion for judgment on the pleadings, holding that that these allegations, laid out with detail in the amended complaint, were enough to plead inequitable conduct with particularity as required by the Federal Circuit's Exergen decision. Id. at 22.
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