Articles Posted in Sue L. Robinson

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Judge Robinson recently granted a motion to dismiss a Hatch-Waxman case for lack of personal jurisdiction because the defendant had almost no connection to Delaware. Although Defendant currently conducts drug and business development only in Massachusetts and New York and is incorporated in Virginia, Plaintiff “point[ed] to [Defendant’s] long-standing former incorporation in the State of Delaware . . . from 2002 to 2014” in support of jurisdiction. Purdue Pharma L.P., et al. v. Collegium Pharm., Inc., C.A. No. 15-260-SLR, Memo. Op. at 7-8 (D. Del. Aug. 6, 2015). Recognizing that “the traditional grounds for exercising general jurisdiction over drug company defendants in Hatch-Waxman litigation have been narrowed” recently, Judge Robinson granted the motion to dismiss because there was no general jurisdiction: “[Defendant] is not currently incorporated in Delaware, nor is Delaware its principal place of business.” Id. at 8-9. Further, “the grounds for establishing specific jurisdiction asserted at bar are not compelling . . . . [Defendant] did not send its Paragraph IV Notice Letter to [Plaintiff] in Delaware; [Defendant] is not registered to do business in Delaware; [Plaintiff] did not prepare its NDA in Delaware. Although [Defendant] worked with a Delaware corporation to conduct clinical trials for its NDA submission, there is no indication of record that the trials themselves took place in Delaware. Likewise, although oxycodone, the API used in [Defendant’s proposed] product, is manufactured in Wilmington, Delaware . . . oxycodone is a basic API that is the subject of numerous patents and is commercially available in at least two dosage forms. Even if such a contact were held to satisfy Delaware’s long-arm statute, the court concludes that it would not pass constitutional muster.” Id. at 10.

Having found that the Court lacked jurisdiction, Judge Robinson next had to decide between transfer to the Southern District of New York, where Defendant had consented to jurisdiction and favored transfer, and the District of Massachusetts, where Plaintiff had filed a “back-up action” and favored: “There is no doubt that jurisdiction can be exercised over [Defendant] in Massachusetts, where [Defendant] continues to be headquartered and to engage in drug and business development and investment activities. . . . [A] straightforward venue like Massachusetts is the most reasonable solution to the parties’ dispute in this regard.” Id. at 11-12.

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In Butamax Advanced Biofuels LLC v. Gevo, Inc., C.A. Nos. 12-1036-SLR; 12-1200-SLR; 12-1300-SLR (D. Del. Aug. 3, 2015), Judge Sue L. Robinson considered the parties’ various dispositive motions on infringement and invalidity.  The Court granted Defendants’ motion as to invalidity for one patent, based on indefiniteness, as well as their motion for summary judgment of no willfulness.

As to one patent, the Court concluded that the asserted claims’ “% identity” language was indefinite.  See id. at 4-13.  It therefore granted summary judgment as to invalidity and did not consider infringement, as the indefiniteness of the claims prevented a “meaningful infringement analysis.”  Id. at 13.

As to another group of patents, however, the Court found issues of material fact remained as to validity and infringement.  As to questions of enablement and written description, it noted that “[t]he art in the case at bar is generally unpredictable. The disagreement between the experts on whether one of ordinary skill could practice the invention without undue experimentation and whether the inventors had possession of the invention present genuine disputes of material fact better left to the province of the jury.”  Id. at 18.  Similarly, as to infringement, it concluded that “the expert opinions are in direct conflict, therefore, there are genuine issues of material fact as to” infringement, and thus denied Plaintiff’s motion for summary judgment of infringement.  Id. at 19.

As to willful infringement, the Court granted Defendants’ motion, noting that the Court had granted their motion as to indefiniteness one one patent, and Defendants had “at minimum . . . credible and reasonable theories supported by expert testimony” for invalidity and non-infringement as to the other patents.  Id. at 20-21.  Additionally, while “[t]he court recognize[d] [Plaintiff’s] arguments against summary judgment of no willfulness based on the concurring opinions in both Halo Elecs., Inc. v. Pulse Elecs.,Inc., 769 F.3d 1371, 1383 (Fed.Cir.2014) (O’Malley, J., concurring), and Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc., 776 F.3d 837, 847 (Fed. Cir. 2015) (Hughes, J., concurring), calling for a review of the willfulness jurisprudence.  . . . the court decline[d] to depart from the application of the controlling law, Seagate’s two-part test, until such time as the Federal Circuit does so.”  Id. at 21 n.18.

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In March 2013, plaintiffs Bayer Healthcare Pharmaceuticals Inc., Intraserv GmbH & Co. KG, and lntendis GmbH filed this patent infringement case following defendant Glenmark Pharmaceuticals Limited’s filing of an Abbreviated New Drug Application to market a generic azelaic acid hydrogel.  lntendis GmbH, et al. v. Glenmark Pharmaceuticals Limited, et al., C.A. No. 13-421-SLR (D. Del. July 27, 2015).

Plaintiff Bayer is the the holder of the New Drug Application for Finacea® Gel, 15%, indicated for topical treatment of inflammatory papules and pustules of mild to moderate rosacea. Plaintiff lntraserv is the assignee of the patent-in-suit, U.S. Patent No. 6,534,070 titled “Composition with Azelaic Acid.”  Plaintiff Intendis is the exclusive licensee of the ‘070 patent.

Following a bench trial in February 2015, the Court recently issued its Findings of Fact and Conclusions of Law.  Judge Sue L. Robinson found the ‘070 patent valid and infringed by Glenmark’s proposed ANDA product.

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Judge Sue L. Robinson recently considered plaintiff’s renewed motion to dismiss defendant’s counterclaim of inequitable conduct.  Quest Integrity USA, LLC v. Cokebusters USA Inc., C.A. No. 14-1483-SLR (D. Del. July 22, 2015).  Judge Robinson previously denied defendants’ request to transfer to the Southern District of Texas and plaintiff’s motion for a preliminary injunction.

Plaintiff’s motion argued that defendant’s counterclaim did not adequately show “but-for materiality” or “intent to deceive.”  Id. at 7.  As a preliminary matter, in their opposition, defendant argued that because plaintiff attached an exhibit to its motion containing a portion of the prosecution history, plaintiff’s motion to dismiss was converted to a summary judgment motion.  Id. at 2 fn.4.  Judge Robinson disagreed, noting that the prosecution history is a “public record,” and public records can be considered on a motion to dismiss.  Id. 

As to the merits of the motion, Judge Robinson noted that because the counterclaim was based on nondisclosure of prior art, defendant had to prove by clear and convincing evidence that “the applicant knew of the information, ‘knew that it was material, and made a deliberate decision to withhold it.'”  Id. at 7 (quoting Therasense v. Becton, Dickinson & Co., 649 F.3d 1276, 1290 (Fed. Cir. 2011).  Defendant alleged that the invention claimed in the patent in suit “was not new, was obvious from existing technology, and had been sold before the bar date.”  Id. at 8.  If the PTO had known of the prior art, it would not have issued the patent.  Id.  Judge Robinson, noting that the Court need not decide “the merits of the claim, only whether materiality had been alleged with sufficient particularity[],” found that defendant’s claims passed muster.  Id. at 8-9.  Regarding intent to deceive,  Judge Robinson also found the pleading sufficient because defendant pled adequate evidence of lack of candor with the PTO, from which intent to deceive “is the ‘single most reasonable inference [] to be drawn from the evidence.”  Id. at 10 (quoting Therasense 649 F.3d at 1290).

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In a recent Memorandum Opinion, Judge Sue L. Robinson denied defendants’ motion to transfer venue to the Southern District of Texas. Quest Integrity USA, LLC v. Clean Harbors Industrial Services, Inc., C.A. Nos. 14-1482, 14-1483-SLR (D. Del. Jul. 8, 2015). As Judge Robinson explained, plaintiff “is a limited liability company organized and existing under the laws of the State of Texas and having its principal place of business in Seattle, Washington.” Judge Robinson further explained that “Defendant Clean Harbors is a corporation organized and existing under the laws of the State of Delaware and having its principal place of business in Norwell, Massachusetts,” and “Defendant Cokebusters is a corporation organized and existing under the laws of the State of Delaware and having its principal place of business in Houston, Texas.” Id. at 1-2

In denying the motion to transfer, Judge Robinson first explained that because “‘convenience’ is separately considered in the transfer analysis, the court declines to elevate defendants’ choice of venue over the choice of the plaintiff.” Id. at 4. Judge Robinson found that “plaintiffs have historically been accorded the privilege of choosing their preferred venue for pursuing their claims remains a significant factor.” Id. Further, as Judge Robinson noted, “Defendants admit to engaging in infringing conduct in Delaware,” and “[t]hat fact negates the argument that the alleged infringement is focused in the Texas Gulf Coast region.” Id. Judge Robinson went on to observe that “[a]s is usual in these cases, the convenience factors do not weigh in favor of transfer because discovery is a local event and trial is a limited event.” Id. at 8. Additionally, as Judge Robinson explained, “[a]lthough Delaware is not the locus of any party’s business activities, it is a neutral forum.” Id. Judge Robinson thus concluded that transfer was not warranted in the interests of justice. Id.

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In a declaratory judgment action brought by Draeger alleging non-infringement and invalidity, Judge Sue L. Robinson granted My Health’s motion to set aside the clerk’s entry of default and motion for extension of time to answer, and denied Draeger’s motion for default judgment as moot. Draeger Medical Systems, Inc. v. My Health, Inc., C.A. No. 15-248-SLR (D. Del. July 1, 2015). Draeger had filed the action after My Health’s affiliate had contacted it to potentially negotiate a license for the patent-in-suit. My Health had not responded to Draeger’s complaint, but explained that its general counsel had been suffering from neurological problems at the time process was served and had no memory of seeing the complaint. Id. at 2-3.

The Court granted My Health’s motion. While Draeger argued that it would suffer prejudice “if the default is set aside, given that it is a developing company and the ‘specter of litigation’ is detrimental to its sales, market share, business decisions, and investment from third parties,” the Court concluded that these concerns were “more suited to establishing subject matter jurisdiction than precluding litigation on the merits.” Id. at 4-5. The Court also rejected Draeger’s arguments that My Health’s conduct was willful or in bad faith, accepting as credible that the general counsel’s health problems had caused the lack of response, especially where Draeger had rejected My Health’s request for a short extension acompanyied with an explanation as to these “extenuating medical circumstances.” Id. at 6.

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Judge Sue L. Robinson recently denied plaintiff Quest Integrity USA, LLC’s (“Quest”) motions for preliminary injunction against defendants Clean Harbors Industrial Services, Inc. and Cokebusters USA Inc. (collectively, the “Defendants”).  Quest Integrity USA, LLC v. Clean Harbors Industrial Services, Inc., C.A. Nos. 14-1482, 14-1483-SLR (D. Del. June 12, 2015). The patent-in-suit, U.S. Patent No. 7,542,874 (the “’874 patent”) was directed to a system for inspecting furnace tubes of petroleum refineries. Id. at 2-7.

Addressing the motions, Judge Robinson first considered Quest’s likelihood of success on the merits, and found that Quest had made a prima facie showing of infringement by both Defendants.  Id. at 9-11. Turning to the issue of validity, however, Judge Robinson explained that “[v]alidity challenges during preliminary injunction proceedings can be successful, that is, they may raise substantial questions of invalidity, on evidence that would not suffice to support a judgment of invalidity at trial.” Id. at 8.  Judge Robinson found that a “substantial question of invalidity” was raised based on a prior art reference (a final report prepared by Quest for Orion Norco Refining explaining its process), and thus Quest could not demonstrate a likelihood of success on the merits.  Id. at 11-16. In reaching this determination, Judge Robinson explained that “[t]he court is required to construe the patent consistently for purposes of its infringement and invalidity analyses,” and that the “broad scope of the ‘874 patent . . .  encompasses the Norco Report.”  Id. at 13-14.

Judge Robinson then went on to find that “[e]ven if Quest had demonstrated a likelihood of success on the merits, . . . Quest has not carried its burden to clearly establish irreparable harm.” Id. at 16. Specifically, Judge Robinson explained that “Quest has not even attempted to analyze the relative importance of patented versus non-patented features and has tacitly conceded that several of [its] initially raised factors cannot be demonstrated.” Id. at 17-18. Further, Judge Robinson was not persuaded that Quest had “demonstrated that defendants pose a threat of irreparable harm if allowed to compete, given the size of the market, the large number of refineries, and the fact that the parties have been competing for years.” Id. at 18.

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In a recent memorandum, Judge Sue L. Robinson denied without prejudice the defendants’ motions to dismiss for failure to state a claim in nine related cases.  Network Congestion Solutions, LLC v. AT&T Inc., et al., Civ. Nos. 14-894-SLR, 14-895-SLR, 14-896-SLR, 14-897-SLR, 14-898-SLR, 14-899-SLR, 14-901-SLR, 14-902-SLR, 14-903-SLR, and 14-904-SLR (D. Del. June 4, 2015).  The complaints asserted infringement of a method claim by “accused ‘network congestion management practices’ . . . used by defendants internally to provide better service to their customers.”  Id. at 4.  Judge Robinson explained, “[a] rational query is whether there is any way for a patent holder, such as plaintiff, to present—in a complaint—the kind of factual detail defendants suggest is required under the Iqbal/Twombly standard.  Drawing on my judicial experience and common sense, I would say ‘no.’”  Id.  Judge Robinson added, “if the practices identified by plaintiff operate through defendants’ proprietary software, then it is reasonable to conclude that the notice requirements have been met, based on the quantity and quality of publicly available information.  To follow defendants’ reasoning would deny an entire class of patent holders the opportunity to even get before a court to test a strength of their intellectual property rights through discovery, let alone to enforce such rights.  Id. at 4-5.  The Court noted that the plaintiff provided more information about its allegations in its opposition to the motion to dismiss, and denied the motions to dismiss without prejudice to renew if the plaintiff failed to amend its complaints to incorporate that additional information.

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Judge Robinson recently faced the question of the application of two pre-litigation agreements between Boston Scientific, Medtronic, and their predecessors to the awarding of attorneys’ fees at the end of the litigation. The specific agreements at issue included a provision requiring reimbursement of the prevailing party’s attorneys’ fees if infringement litigation arose between the parties. This provision applied to the instant litigation because the later agreement modified the earlier agreement in order to substitute successors in interest but did not eliminate the attorneys’ fee provision of the earlier agreement. Medtronic, Inc. v. Boston Scientific Corp., C.A. No. 07-823-SLR, Memo. at 7-8 (D. Del. May 27, 2015). Furthermore, although one of the defendants was not a signatory to the agreement at issue, Judge Robinson concluded that the defendant was bound by that agreement because it had enjoyed the benefits of the agreement and had engaged in a course of conduct that showed it adopted the agreement. Id. at 8-9.

Judge Robinson also determined that the declaratory judgment plaintiff, Medtronic, was not time-barred from moving for attorneys’ fees under the agreements. The agreement at issue required only a determination of the prevailing party for its “loser pays” provision to apply. Accordingly, there were no issues of fact to present to a jury and Medtronic had not waived its entitlement to attorneys’ fees by failing to offer proof at trial or present the claim in the pretrial order. Judge Robinson therefore concluded that the request for attorneys’ fees post-trial was timely. Id. at 4-6.

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In a recent decision, Judge Sue L. Robinson ruled on a number of post-trial motions in a dispute over digital camera technology.  Intellectual Ventures I, LLC, et al. v. Canon Inc., et al., Civ. No. 11-792-SLR (D. Del. May 18, 2015).  Notably, Judge Robinson found that the defendant waived its right to pursue two purportedly renewed motions for judgment as a matter of law.  First, Judge Robinson explained that although the defendant moved pursuant to Rule 50(a) for a judgment of no infringement of one asserted patent, and the defendant argued in opposition to the plaintiff’s Rule 50(a) motion with respect to the validity of that same patent, the defendant failed to, itself, move pursuant to Rule 50(a) for judgment of invalidity as a matter of law.  Judge Robinson found, therefore, that the defendant waived its right to file a renewed motion for judgment as a matter of law seeking to invalidate that patent.  Id. at 11 n.2.  With respect to another patent, the Court found that the defendant waived its right to pursue a renewed motion for judgment as a matter of law of obviousness, because its Rule 50(a) motion was limited to arguments relating to anticipation.  Id. at 19 n.6.

Judge Robinson granted the plaintiff’s motion for a new trial with respect to the jury’s finding of no induced infringement of two patents.  As the Court explained, the defendant had represented that it did not intend to argue non-infringement, and the defendant in fact offered no expert testimony on non-infringement.  Instead, the defendant called a fact witness who discussed the operation of the accused technology, and then used that testimony as “the bedrock for its closing argument to the jury that the accused devices do not meet the ‘digital image magnification’ limitation of the claims.”  Id. at 45-46.  Judge Robinson explained that the defendant’s counsel “improperly played the role of expert witness by inferring from factual testimony that the accused devices do not meet the claim limitations.”  Id. at 46.  Although the defendant argued that a limiting instruction cured any prejudice this caused, the Court disagreed and explained that “[t]he court promised that it would correct any counter-mischief by Canon’s counsel in this regard. . . . It does now by granting IV’s motion for a new trial on infringement . . . .”  Id. at 47.

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