Delaware IP Law Blog

Sitting by designation, Judge Bumb recently considered a motion to strike several affirmative defenses and counterclaims. In Bayer CropScience AG v. Dow Agrosciences LLC, C.A. No. 10-1045-RMB/JS (Dec. 30, 2011), plaintiff Bayer CropScience brought an infringement action against Dow Agrosciences, and Dow raised various affirmative defenses and counterclaims. In considering Bayer’s motion to strike some of Dow’s affirmative defenses and counterclaims, the court was faced with the issue of what pleading standard applied. With respect to the affirmative defenses, Judge Bumb stated: “While the Third Circuit has not yet opined as to whether Twombly/Iqbal is applicable to affirmative defenses, this Court agrees with those courts that have found Twombly/Iqbal inapplicable to affirmative defenses.” Id. at 3. Therefore, the court “review[ed] Defendant’s affirmative defenses only for sufficiency and for compliance with Rule 9(b).” Id. at 4. Under this standard, the motion to dismiss the defense of equitable estoppel was granted, but the motion to dismiss the defense of patent misuse was denied. Id. at 7-11.

Turning to the question of counterclaims, Judge Bumb noted that while counterclaims normally are subject to the rigors of Twombly/Iqbal, “[i]n the patent context . . . some courts have, whether expressly or implicitly, declined to apply the rigors of Twombly/Iqbal to defendants asserting invalidity counterclaims.” Id. at 5. Although the case at hand involved a counterclaim of unenforceability rather than invalidity, the court stated that “the same logic that led other courts to conclude that invalidity counterclaims were not subject to the heightened pleading under Twombly/Iqbal leads this Court to the same conclusion with respect to patent unenforceability counterclaims.” Id. at 7. Applying this standard to defendant’s counterclaim for a declaratory judgment of unenforceability, the court dismissed the counterclaim to the extent that it was based on equitable estoppel, but refused to dismiss the patent misuse or prosecution history estoppel aspects of the counterclaim. Id. at 11-13.

Continue reading "Twombly/Iqbal Not Applicable to Affirmative Defenses, Some Counterclaims" »

Judge Kugler recently ruled on the plaintiff’s motion for a preliminary injunction in Sciele Pharma Inc. v. Lupin, C.A. No. 09-0037-RBK (D. Del. Dec. 6, 2011). Considering likelihood of success on the merits, Judge Kugler found that “since a generic drug’s label is found to control the analysis of potential infringement in a case like this one, and since Defendant’s label reflects a Tmax that falls within the range claimed in Plaintiff’s patent, Plaintiff has shown a likelihood [of infringement].” Id. at 11. Regarding irreparable harm, the court observed that the market for the branded drug was “in steady and irreversible decline, and has been for some time,” and found “that a loss of market position accompanied by market diminution presents an even stronger case for irreparability.” Id. at 18. The court then found irreparable harm based on “projected lost sales, price erosion, and lost market share, in concert with [a] claimed loss of goodwill.” Id.

While Judge Kugler found that a balancing of hardships generally favored the plaintiff and granted a preliminary injunction, he refused to order a recall of the generic product that had already been released. The court accepted the defendant’s argument on this point that a recall would be “onerous, complicated and expensive” and would result in “a loss of goodwill and harm to its reputation with distributors and retailers.” Id. at 19.

Continue reading "Judge Kugler Grants Preliminary Injunction but Refuses to Order Recall in ANDA Case" »

In an ANDA patent infringement action involving generic versions of Travatan® and Travatan Z®, Judge Davis recently issued a claim construction decision construing disputed claim terms of U.S. Patent Nos. 5,631,281; 6,011,062; 6,503,497; and 6,849,253. Alcon Research Ltd. v. Barr Laboratories Inc., C.A. No. 09-318-LDD (D. Del. Sept. 6, 2011). The following terms were construed:

“borate-polyol complex”
“ophthalmically acceptable antimicrobial agent”
“to enhance the antimicrobial activity”
“aqueous ophthalmic composition”
“prostaglandin”
“enhance / enhancing the chemical stability”
“therapeutically-effective amount of prostaglandin”
“aqueous composition”

Continue reading "Judge Davis: Claim construction opinion" »

In Silicon Economics, Inc. v. Financial Accounting Foundation, C.A. No. 11-163 (D. Del. August 17, 2011), Judge Baylson granted a motion to dismiss for lack of standing, after the plaintiff failed to show an actual injury.

The originates from the terms of service of the website of the Financial Accounting Standards Board ("FASB"). The founder of plaintiff Silicon Economics, Inc ("SEI"), Joel Jameson, apparently submitted comments to the FASB via its website; those comments included the idea that resulted in the patent at issue, which covers an accounting "equation." Id. at 2. Later, Jameson realized that the terms and conditions of the website included a clause granting the FASB a license to use information and ideas submitted "for any purpose." Id. at 3.

After noticing the terms, Jameson contacted the FASB; SEI now alleges that the FASB claimed an ownership interest in the patent. In response, SEI filed the present action (after attempting one in California), and asserts Sherman act claims, as well as California law unfair competition claims.

The Court dismissed all of the claims. SEI has no standing, because it cannot show any actual injury -- the only alleged injury was to its reputation, but it provided no specifics. Further, it failed to allege sufficient facts in favor of its anti-trust claim, because it failed to show that the challenged conduct (the seeking of public comment) was commercial in nature. The Court did, however, grant leave to amend the complaint to address these issues.

Interestingly, the Court noted that counsel for the Defendants has "unconditionally renounced any ownership interest" in the patent. Id. at 17-18. Therefore, according to the Court, the "positions of the parties should be amenable to a settlement," and that "prolonged litigation . . . do[es] not seem to be necessary." Id.

Continue reading "Judge Baylson: Motion to Dismiss GRANTED" »

In Shire LLC v. Teva Pharms USA, Inc., C.A. No. 10-329 (D. Del. May 12, 2011), Judge Dalzell, sitting by designation due to the judicial vacancy in the District of Delaware, stayed all proceedings pending confirmation of the President's nominee to fill the vacancy -- Richard G. Andrews.

Continue reading "Judge Dalzell: All proceedings before Judge Dalzell STAYED pending confirmation of Richard G. Andrews as U.S. District Judge" »

Visiting judge Berle M. Schiller recently issued a venue decision notable for its analysis of the concept of "home turf." Defendant CardioMEMS, a Delaware entity, had no offices, employees, or records in the state. Plaintiff LUMC, a non-U.S. entity, had even less of a connection. Nonetheless, LUMC brought its infringement action in Delaware. CardioMEMS cried foul, and sought to move the litigation to its principal place of business.

The Court declined to transfer the action. Specifically, the Court was not persuaded by CardioMEMS's argument that LUMC had no legitimate reason to file in Delaware:

"CardioMEMS has overstated its case . . . . LUMC is a Dutch company and has no 'home turf' in this country. Defendant's argument, taken to its logical conclusion, would never afford deference to the choice of venue of a foreign plaintiff and leave the choice of venue largely in the control of the defendant. Additionally, it is not correct that LUMC has no reason to litigate this action here. [Among other reasons,] CardioMEMS is incorporated in Delaware."

In a field frequently litigated, this decision provides context to what it means, at least for foreign entities, to litigate on "home turf" for purposes of assessing a transfer motion.

Academisch Ziekenhuis Leiden v. CardioMEMS, Inc., C.A. No. 10-1127-BMS (D. Del. Mar. 9, 2011) (Schiller, J.).

In Walker Digital, LLC v. Multi-State Lottery Association, C.A. No. 10-1113-PD (D. Del. Mar. 3, 2011), Judge Diamond denied defendant’s motion to transfer to the Southern District of Iowa where defendant is principally located. This patent infringement case involves defendant’s alleged use of plaintiff’s patented multiplier method in multi-state lottery games. Id. at 1. Judge Diamond went through each of the Jumara factors. Judge Diamond disagreed with defendant’s argument that plaintiff’s choice of forum deserved little deference because “plaintiff’s choice of forum is a paramount consideration[.]” Id. at 3 (internal citations omitted). Judge Diamond also found that the alleged infringing conduct occurred in every state participating in the lotteries at issue, including Delaware. Id. Judge Diamond also found that the convenience of the parties factor was neutral, but the convenience of witnesses weighed against transfer because plaintiff’s non-party witnesses reside or work in Connecticut or New York. Id. at 4-5. Finally Judge Diamond found that public interest did not favor transfer because time to trial in both jurisdictions was the same in both districts and Delaware has more experience adjudicating patent cases. Id. at 5.

Continue reading "Visiting Judge Paul Diamond: Motion to Transfer to Southern District of Iowa, defendant’s principal place of business, DENIED" »

Last Wednesday, in MagSil Corp. v. Seagate Technology, C.A. No. 08-940 (D. Del. Feb. 16, 2011), Chief Judge Bartle (sitting by designation from the District of New Jersey) granted Defendants’ motion for summary judgment and issued a memorandum opinion addressing Plaintiff’s asserted claims in light of the enablement requirement of 35 U.S.C. § 112.

The asserted claims related to a junction consisting of two or more electrodes separated by a layer of insulation. The junction exhibited an electrical resistance which could be increased or decreased by exposing the junction to magnetic fields. Id. at 4. While the specification taught a method of constructing junctions with a maximum resistive change of 11.8%, the inventors claimed junctions with resistive changes of “at least 10%” – essentially claiming not only the junction taught by the specification, but all junctions “with resistive changes of 20%, 200%, 2000%, and up to infinity[.]” Id. at 8. Because the asserted claims had no upper limit on resistive change, id. at 8, Defendants proved by clear and convincing evidence that the specification was “insufficient to enable one of ordinary skill in the art to make and use the full scope” of the claims without undue experimentation, making the claims invalid. Id. at 18-19.

Continue reading "N.J. Chief Judge Bartle: MagSil’s Open-Ended Claims Invalid for Lack of Enablement" »

In a case involving e-readers, Judge Robreno construed the following claim terms

- broadcast
- book, electronic book
- encrypting the selected electronic book
- decrypting the encrypted selected electronic book
- information that allows encryption and decryption of the electronic book and encryption and
decryption of the encryption and decryption keys
- key generator
- list of titles of available books
- associate registration system
- associate enrollment system
- compensation system
- online registration system
- referral processing system
- report generation system

Discovery Patent Holdings, LLC v. Amazon.com, Inc., C.A. 10-600-ER (D. Del. Feb. 4, 2011)

Earlier this month, in Brigham and Women's Hospital, Inc. v. Teva Pharmaceuticals USA, Inc., C.A. No. 08-464 (D. Del. Jan. 7, 2011), Chief Judge Bartle, sitting by designation from the District of New Jersey, issued a memorandum opinion addressing several invalidity issues raised during a three-day bench trial, including inequitable conduct, anticipation, and obviousness-type double patenting. The Court rejected all of Defendants' invalidity grounds, and held that the patent claims at issue were not invalid.

The opinion addresses an interesting obviousness-type double patenting claim. Because the patents at issue straddled the June 8, 1995 patent term change, Plaintiff's later-filed and later-granted patent will expire before its two earlier-filed patents that covered a broader subject matter. Id. at 24. Defendants argued that the earlier-filed, broader patents should be invalidated under obviousness-type double patenting because they unjustly extend protection over the narrower subject matter of the later-filed, but earlier-expiring patent. Despite some precedent for this theory (a Board of Patent Appeals and Interferences opinion), the Court rejected it, holding that "the later-filed, later-issued . . . patent could not and did not create an 'unjustified timewise extension' of the earlier-filed, earlier-issued . . . patents." Id. at 27 (quoting In re Schneller, 397 F.2d 350, 354 (C.C.P.A. 1968)).

Brigham and Women's Hospital, Inc. v. Teva Pharmaceuticals USA, Inc., C.A. No. 08-464 (D. Del. Jan. 7, 2011)