Articles Posted in Mary Pat Thynge, Chief Magistrate Judge

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Magistrate Judge Thynge has issued a Report and Recommendation addressing whether there is an actual case or controversy within the meaning of the Declaratory Judgment Act over a suit in which the plaintiff seeks judgment of a defendant’s willful infringement based on the defendant’s filing of a New Drug Application with the FDA. Both the plaintiff and the defendant in this case filed NDAs with the FDA and neither party’s NDA has been approved. The parties in the case are also parties to an interference in the PTO in which the defendant is the senior party. Clarus Therapeutics, Inc. v. Lipocine Inc., C.A. No. 15-1004-RGA-MPT, Report and Recommendation at 1-5 (D. Del. June 23, 2016).

Given these facts, Judge Thynge found “significant, concrete steps to conduct infringing activity” as well as ripeness for judicial resolution: “Defendant not only has a working product, but also has an NDA before the FDA for review. Additionally, plaintiff notes defendant’s market research, hiring of new sales and marketing personnel, saving for manufacture of commercial quantities of its product, manufacture of launch supplies, and anticipation of the manufacturing agreements. Defendant contends the prerequisite FDA approval for commercialization and entry into the market is uncertain and, if approval is eventually given, commercial launch will not be immediate. While this may be accurate, defendant’s conduct is still indicative of meaningful preparation for the making, launch, and use of [its drug product] that satisfies the immediacy requirement for declaratory judgment jurisdiction.” Id. at 8-11.

Moreover, “the PTAB’s decision in the upcoming Interference will not determine the issue of infringement central to plaintiff’s complaint. Due to the lack of further factual development needed and the PTAB’s inability to hear plaintiff’s infringement claim in the forthcoming Interference, the issue is fit for judicial decision.” Id. at 11. Judge Thynge therefore recommended that the defendant’s motion to dismiss be denied.

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Judge Mary Pat Thynge recently recommended the Court grant Illumina’s motion to amend its Answer and Counterclaims to assert inequitable conduct.  Cornell University v. Illumina, Inc., No. 10-433-LPS-MPT (D. Del. May 27, 2016).  In its motion, Illumina alleged “the applicants and prosecuting attorney of the [] patents violated their duty of candor to the PTO by filing a false or misleading 37 C.F.R. § 1.131 declaration” during prosecution regarding the applicants reduction to practice of the claimed methods.  Id. at 2.  According to Illumina, absent the false or misleading statement, the patents would not have issued.  Id. at 2-3.

Judge Thynge found that there was good cause to amend and no undue delay, despite the fact that the deadline to amend pleadings had passed, based on the fact that the underlying facts supporting the amendment were obtained and confirmed during discovery, in particular through deposition testimony.  Id. at 10-13.    The basis for Cornell’s opposition was futility because the proposed amended pleading did not adequately plead inequitable conduct.  Id. at 13.  Judge Thynge disagreed, finding that the inequitable conduct allegations were pled with particularity, “identify[ing] the specific who, what, when, where and how of the material misrepresentation or omission committed before the PT0.”  Id. at 14 (citing Exergen v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1328 (Fed. Cir. 2009).  The “who” identified by Illumina were the specific applicants and prosecution counsel.  Id. at 14.  “What” information was purportedly misrepresented to the PTO was the date of the applicants’ reduction to practice.  Id. at 14-15. The “when” identified was the date of the declaration in question as well as “the actions the PTO took before and after the filing of that declaration.”  Id. at 15.  Illumina identified the declaration as “where” the misrepresentation occurred, and detailed “how” the declaration and purported misrepresentation resulted in the PTO’s issuance of the patents.  Id. at 15-16.

Cornell responded that the proposed pleading failed to plead that the declaration was material and that the persons identified had specific intent to deceive the PTO.  Id. at 16.  Regarding materiality, Cornell pointed to evidence “inconsistent with defendant’s allegations and reading of the [declaration].”  Id. at 18-19.  Judge Thynge determined, however, that at the pleading stage “plaintiffs’ evidence is irrelevant and the court can not address the merits of that evidence.”  Id. at 19.  Judge Thynge concluded, therefore, that Illumina sufficiently alleged that the declaration contained a material false or misleading misrepresentation.  Id.  Regarding intent to deceive, Cornell argued that “there can be no finding of deceptive intent, nor a reasonable inference of deceptive intent because [the applicants] testified they believed the declaration to be true at the time of filing and that [prosecution counsel] also testified he took steps to ensure that the inventors understood what the declaration, and the specific sentence at issue, meant before they signed the declaration.”  Id. at 19-20.  Judge Thynge noted that Cornell’s argument again “relies on assertions of fact requiring the court to address the merits of the evidence[.]”  Id. at 20.  Based on the allegations in the proposed pleading, Judge Thynge determined Illumina adequately pled specific intent.  Id. at 20.

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Chief Magistrate Judge Mary Pat Thynge recently found that a plaintiff’s motion to compel sought discovery that was disproportional under Rule 26.  AVM Technologies, LLC v. Intel Corp., C.A. No. 15-33-RGA/MPT (D. Del. May 3, 2016).  Specifically, the plaintiff sought discovery of “products that are not accused and pre-date the accused products because documents created when features were introduced would more likely address their purpose and the problems to be resolved.”  Such information, the plaintiff argued, “would refuse Intel’s defense of lack of utility, noninfringing technology and also Intel’s arguments of accidental occurrence.”  Intel argued in response that it had produced a substantial number of documents relating to, among others, the immediate predecessor generations of products not accused.”  Intel added that the plaintiff’s motion, if granted, would require Intel to search and produce “a range of documents covering over 20 years” relating to “nearly every microprocessor made by Intel.”  Judge Thynge focused on the proportionality requirement of Rule 26, and explained that the Court is required to “evaluate[] the parties’ arguments and reasoning for or against the requested production on the bases of the production sought, the other production to date, the degree of the requested production’s relevance, and the burdens imposed on the party from whom the production is requested.”  In post-hearing submissions, the plaintiff accepted Intel’s compromise offer to search a high level database, and to then search across hits from that database using the search terms requested by the plaintiff.  As a result, Judge Thynge denied the plaintiff’s motion but ordered Intel to perform the agreed upon searches.

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In Sunpower Corporation v. PanelClaw, Inc., C.A. No. 12-1633-MPT (D. Del. Apr. 1, 2016), the parties had stipulated to Defendant’s filing of an early motion for summary judgment on limited issues. Id. at 2. To that end, Defendant moved for summary judgment of non-infringement on one patent and invalidity of another patent under Section 112 and/or Section 101. Chief Magistrate Judge Mary Pat Thynge granted the motion as to non-infringement, but denied the motion as to invalidity.

Defendant based its non-infringement defense on the PTAB’s construction of a certain term during the inter partes review. As this patent was expired, the PTAB did not adopt the broadest reasonable construction, instead applying a standard of review similar to that of district courts. Id. at 9-10. The Court found the PTAB’s construction “well-reasoned and persuasive” and adopted it, see id. at 13-14, and then concluded that Defendant’s accused products did not infringe one of the asserted patents, rejecting Plaintiff’s position that it was too early in the case to determine infringement where Defendant’s evidence of non-infringement was taken from Plaintiff’s own infringement contentions. See id. at 15.

Defendant also argued that the second patent-in-suit was invalid as indefinite, citing “certain statements and conclusion the PTAB made [regarding anticipation] in its [] IPR decision, and the testimony of [Plaintiff’s] expert . . . as part of that IPR.” Id. at 17. But the Court agreed that Defendant had not met its burden based on the current record, noting that it was not bound by the PTAB’s discussion and that another district court had successfully construed the portion of the claim that Defendant argued was indefinite. Id. at 19-20. As to Defendant’s enablement, written description and/or inoperability, the Court concluded that its “conclusory” attorney arguments were insufficient. See id. at 24-25.

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Chief Magistrate Judge Mary Pat Thynge recently issued a Report and Recommendation regarding defendant Amazon.com, Inc.’s motion for summary judgment of non-infringement.  Hand Held Products, Inc. v. Amazon.com, Inc., et al., C.A. No. 12-768-RGA-MPT (D. Del. Jan. 21, 2016).  The accused products at issue are Amazon mobile apps used by consumers to find and purchase Amazon products from their smartphones.  Id. at 5.  “One way the Amazon Apps can be used to find a product on Amazon is by scanning the barcode of the product.”  Id.  This barcode scanning ability is the feature accused of infringing the patent-in-suit.  Id.  Based on the Court’s claim construction, Amazon argued that “it is undisputed that a user of the Accused Apps cannot take the requisite snapshot by pressing a shutter button, setting a timer, or in any other manner.”  Id. at 8 (emphasis in original).  The Court agreed.  “[T]he Accused Apps provide no mechanism by which a user selects an instant in time to capture a barcode image and, therefore, the Accused Apps do not infringe the asserted claims of the [patent-in-suit].”  Id. (emphasis in original).

UPDATE:  On March 31, 2016, Judge Andrews overruled the plaintiff’s objections to Chief Magistrate Judge Thynge’s report and recommendation, adopted it without modification, and granted summary judgment of non-infringement.  Hand Held Products, Inc. v. Amazon.com, Inc., et al., C.A. No. 12-768-RGA-MPT (D. Del. Mar. 31, 2016)

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In Verisign, Inc. v. XYZ.com, LLC, et al., C.A. No. 15-mc-175-RGA-MPT (D. Del. Dec. 4, 2015), Chief Magistrate Judge Mary Pat Thynge considered a motion to quash subpoenas. The plaintiff in a false advertising action in the Eastern District of Virginia had served subpoenas on two non-parties, requesting documents related to the sale of a top-level domain name to defendants, agreements and communications related to this domain name and the plaintiff, and communications referencing other domain names. See id. at 3 (listing requested categories of documents).

The Court first found that defendants did have standing to challenge the subpoena, where the non-parties had not objected to the subpoena, explaining that while “[c]ourts have held that parties . . . do not have standing to a subpoena if they are not the target of the subpoena . . . other courts have found that parties who claim privilege or a personal right in the subpoenaed information from a nonparty have standing to object.” Id. at 4-5. Here, defendants alleged that the subpoenas requested “documents between defendants and KBE, who has worked closely with defendants on business transactions, and require the nonparties to disclose confidential information and trade secrets. These representations demonstrate sufficient interest in the requested documents to determine defendants’ standing.” Id. at 5.

The Court also concluded that plaintiff had not provided a reasonable time for response to the subpoenas. Although the non-parties had agreed to a short production turnaround period (five days from service), “the time allotted for compliance was unreasonable and effectively gave defendants one business day [due to holidays] and a total of five days to seek protection of documents, in which they had a sufficient interest.” Id. at 6.

Ultimately, the Court did order production of the subpoenaed documents over defendants’ objections that the requested information was irrelevant to the case in Virginia, that the documents could have been sought through defendants, and that the subpoenas requested proprietary information from whose production defendants would suffer irreparable harm. The Court did observe that it “question[ed] plaintiff’s need to subpoena [certain requested categories] when production of these documents was potentially obtainable from defendants. If any issue arose regarding such production, it then could have been addressed by the court having more familiarity with the underlying matter. To address defendants’ concerns, however, production of the above categories is ordered under the ‘Attorney’s Eyes Only’ designation provided for in the protective order [in the underlying action]. [However], as [one category of] requested documents, the court [found] there was no evidence that these documents contain trade secrets or confidential information of defendants.”  Id. at 11.

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Chief Magistrate Judge Thynge recently issued a report and recommendation in which she recommended denial of plaintiffs Astellas Pharma and Celgene Corp.’s motions to dismiss and motions to strike counterclaims, each of which she found to have been adequately plead. The challenged counterclaims and defenses were directed to (1) an improper continuation application under § 102(b) without which, the defendant alleged, the patents-in-suit would not have issued, (2) an improper priority date under § 120 due to failure to name the “true inventors” in the earlier application and an effort to amend inventorship that would result in no common inventors, and (3) improper inventorship under § 256 because the original patent was disclaimed under § 253 before any effort to correct inventorship, which Judge Thynge found to involve “sufficient facts to support improper inventorship, which warrants discovery on this issue.” Celgene Corp., et al. v. Fresenius Kabi USA, LLC, C.A. No. 14-571-RGA, Report and Recommendation at 6-8 (D. Del. Dec. 7, 2015).

Judge Thynge also rejected challenges to the defendant’s corresponding affirmative defenses, which were “neither improperly plead nor redundant. Affirmative defenses differ from counterclaims and are governed by Fed. R. Civ. P. 8, rather than Rule 13. Generally affirmative defenses must be initially pled or be subject to waiver of the defense. A counterclaim is governed by Rule 13. The party raising either an affirmative defense or a counterclaim bears the burden of proof. Counterclaims and affirmative defenses that raise the similar contentions are not improper.” Id. at 8. Additionally, because “[m]otions to strike under Rule 12(f) require a showing of prejudice” and the plaintiffs had not “alleged nor demonstrated any prejudice due to the analogous nature between defendants’ counterclaims and affirmative defenses,” Rule 12 provided no basis to strike the affirmative defenses. Id.

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Chief Magistrate Judge Mary Pat Thynge recently granted a motion for summary judgment of invalidity under § 101 filed by Google relating to the Plaintiff’s search method patent.  Collarity, Inc. v. Google Inc., C.A. No. 11-1103-MPT (D. Del. Nov. 25, 2015).  Judge Thynge agreed with Google that the plaintiff’s patent claimed an abstract idea—“refining search queries . . . by switching some used words in the query but not others”—that could be performed on a general purpose computer or even by a human with pen and paper.  The Court also found that the patent claimed no inventive concept.  While the Plaintiff argued that the claims were specific to improving internet searching, Judge Thynge noted that the claims, themselves, never mentioned the internet at all.  Finally, Judge Thynge disagreed with the Plaintiff’s argument that the PTO’s issuance, post-Alice, of a continuation patent that included nearly identical claim language showed that the Plaintiff’s patent was valid.  As the Court explained, if the Plaintiff’s argument was correct, “any patent issued post-Alice would be inoculated from invalidity under Section 101.  That is not the case.”

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In Magnetar Technologies Corp., et al. v. Six Flags Theme Parks Inc., et al., C.A. No. 07-127-LPS-MPT (D. Del. July 21, 2015), Chief Magistrate Judge Mary Pat Thynge recommended granting-in-part Defendants’ motion for attorneys’ fees under section 285, but recommended denial of the motion for fees against Plaintiffs’ counsel under 28 U.S.C. § 1927.

The Court concluded that Plaintiffs’ litigation conduct was objectively unreasonable, making the case exceptional, in particular as to the asserted ‘125 patent that was ultimately found invalid by Chief Judge Stark in July 2014.  While the Court rejected a number of Defendants’ arguments regarding the frivolousness of Plaintiffs’ claims, improper motivation for the suit, and objectively unreasonable conduct, see id. at 11-18, the Court agreed that Plaintiffs’ arguments on inventorship for the ‘125 patent were objectively unreasonable — namely, that it was so obvious that an individual not named on the patent was an inventor that the argument he was not was unreasonable.  See id. at 18-21.  The Court also concluded that Plaintiffs’ reliance on its expert was objectively unreasonable because they “knew or should have known their expert’s opinion fell well short of the Daubert standard.”  Id. at 21.  The Court had granted Defendants’ Daubert motion due to the expert’s unreliable methodology, “strongly criticiz[ing] his entire infringement analysis” and had cited “a laundry list of unanswered questions” in the report.  Id. at 22.  The Court’s “criticism demonstrates that [the expert’s] report so lacked any reliable methodology under the Daubert analysis and [Rule 702] that it should have been apparent to plaintiffs.”  Id.

Having found the case exceptional based on inventorship issues and Plaintiffs’ reliance on its expert, the Court then narrowed the attorney fees available to Defendants to “reasonable attorneys’ and costs regarding the ‘125 patent related to incorrect inventorship since July 29, 2011 [when key inventor depositions occurred] and [Plaintiffs’] expert report when issued.”  Id. at 26.  Because Defendants’ current fee request was insufficiently detailed for the Court to determine whether, for example, the rates were reasonable, the Court ordered Defendants to address these issues in any subsequent modification.  See id. at 26-27.

The Court then recommended denial of Defendants’ request for fees against Plaintiffs’ counsel under 28 U.S.C. § 1927.  The current counsel assumed representation after Plaintiffs’ prior counsel had withdrawn in 2008.  Id. at 5. The Court found no direct evidence that the new counsel knew the ‘125 patent was invalid due to incorrect inventorship, and rejected Defendants’ arguments as to unreasonable litigation conduct based.  See id. at 28-30.   Furthermore, the Court rejected the argument that maintaining the suit on the ‘125 patent after Defendants’ counsel sent two letters regarding the weaknesses of the claims rendered counsel liable, where Plaintiffs’ counsel had “promptly” responded to the letters, explained “in detail” why it disagreed with Defendants’ argument, and “expressed a willingness to continue a good faith dialogue.”  Id. at 30.

Update:  On September 30, 2015, having considered Plaintiffs’ objections to the Report and Recommendation and Defendants’ subsequent response, Chief Judge Stark returned the issue of attorney fees to Magistrate Judge Thynge for additional findings.  See Magnetar Technologies Corp., et al. v. Six Flags Theme Parks Inc., et al., C.A. No. 07-127-LPS-MPT (D. Del. Sept. 30, 2015).  In a footnote, the Court also highlighted the need to comply with the Court’s rules regarding page limits for responses to Report and Recommendation objections (10 pages) and the requirement to file redacted public versions of sealed filings.  Id. at n.1.

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In a recent Report and Recommendation, Magistrate Judge Mary P. Thynge found the court should deny plaintiff’s motion to dismiss and strike defendant’s counterclaim and affirmative defense of inequitable conduct.  Andrulis Pharmaceuticals Corp. v. Celgene Corp., C.A. No. 13-1644-RGA (D. Del. Jul. 16, 2015).  Defendant averred that an inventor and prosecution attorney of the asserted patent engaged in inequitable conduct when they submitted a “December 27, 1999 Response to the PTO, which omitted . . . substantive conclusions of [a] 1996 NYU interim report, and purported to show the ‘enhanced’ effect of thalidomide and carboplatin” for cancer treatment. Id. at 5.

Denying plaintiff’s motion, Judge Thynge first found that defendant pled inequitable conduct with particularity, explaining that defendant provided “the specific who, what, when, where and how” of the material omission. Specifically, Judge Thynge explained that defendant identified that the inventor and prosecuting attorney omitted substantive conclusions from the 1996 NYU interim report from its response to the PTO on December 27, 1999 (i.e., “who,” “what,” “when,” and “where”). Further, Judge Thynge found that defendant identified “how a reasonable examiner would have used the information allegedly concealed”: to determine that the claimed combination “did not have [an] enhanced effect relative to the effect of [carboplatin] alone.”  Id. at 8-9 (emphasis added).

Judge Thynge next concluded that defendant sufficiently alleged underlying facts from which the court could infer but-for materiality, explaining that defendant pointed to:  (i) “the conclusion by the researchers that the response rate for the combination was similar to the administration of carboplatin alone”; and (ii) the fact that “plaintiff[] [omitted] that conclusion and represent[ed] that the interim results instead showed an enhanced effect, on which the examiner relied in deciding to issue [the asserted patent].” Id. at 10. Judge Thynge also found that defendant sufficiently alleged that “plaintiff knew of and withheld material information with a specific intent to deceive the PTO.” Id. at 11. Judge Thynge pointed to several facts defendant relied on as evidence of plaintiff’s intent to deceive: “the interim conclusions were not submitted to the examiner, the conclusions found a similar, rather than enhanced, response rate, and plaintiff argued the interim data showed an enhanced effect.” Id.

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