September 4, 2009

Judge Farnan: Claim Construction

In UCB, Inc. et al. v. KV Pharmaceutical Company, C.A. 08-223-JJF (D. Del. Aug. 18, 2009) Judge Farnan provided claim constructions for disputed terms of a patent pertaining to “multiparticulate pharmaceutical dosage forms that include both immediate release (“IR”) beads and extended release (“ER”) beads.” The parties disputed the meaning of the claim terms “approximately” and “about,” and Defendant contended that a specific claim term was indefinite. Id. at 5. The Court construed the disputed terms as follows:

“The Total Amount of Methylphenidate Hydrochloride Present Is About 10 to 40 mg”
Plaintiffs argued that, according to its plain and ordinary meaning, the word “about” should be defined as “approximately.” Id. at 6-7. Defendant, pointing to the use of the word in the specification, argued that the definition should be more precise so that the term would require “precision within ‘rounding’ or ‘measurement error.’” Id. Ultimately, the Court chose to adopt the Plaintiffs construction. Noting Ortho-McNeil Pharm., Inc. v. Caraco Pharm. Labs., Ltd., 476 F.3d 1321, 1327-28 (Fed. Cir. 2007), the Court held that a narrow construction was inappropriate here because the evidence relied upon by Defendant did not support the proposed construction. Id. at 9-13. Defendant argued that because the word “approximately” is also a claim term, construing “about” to mean “approximately” would give “two different claim terms . . . the same meaning.” Id. at 13. The Court responded that “notwithstanding this consideration, without a more concrete basis for either Defendant’s construction or some alternative construction of “about,” the most appropriate construction of “about” is simply “its ordinary and accepted meaning of ‘approximately.’” Id. (quoting Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005).

“The Immediate Release Beads Are Present in an Amount of About 20 to 40 Percent and the Extended Release Beads Are Present in an Amount of About 60 to 80 Percent”
The Court applied the same legal principles here to construe “about,” and reached the same conclusion giving “the term ‘about’ its ordinary and customary meaning of ‘approximately’” Id. at 16.

Plaintiffs contended that this term required no construction, whereas Defendant asked the Court to construe this term to mean “almost exactly,” which was its plain and ordinary meaning according to the American Heritage College Dictionary. Id. at 17. The Court agreed with Plaintiff’s position, because although “Defendant’s extrinsic dictionary definition clearly supports such a construction, without some meaningful corresponding basis for it in the intrinsic record, the Court will not paraphrase the ordinary word ‘approximately’ as ‘almost exactly.’” Id.

“Water”The Defendant contended that the term should be construed to mean “purified water (per the USP)” whereas Plaintiffs thought no construction was necessary. Id. at 18. The Court agreed with Defendant. Id. “[B]ecause the claim specifically itself calls for the testing to be done in a USP apparatus, it is appropriate to construe the claim term ‘water’ in terms of the definition set forth in the USP.” Id. at 19. This construction is not “an improper importation of a limitation from the extrinsic record, . . . because the claim itself calls for testing to be done in a USP apparatus . . . .” Id.

“An Amount Up to 20 Percent” and “An Amount Up to About 4 Percent”
The Defendant argued that these terms were indefinite, whereas Plaintiffs contended that “the specification confirm[ed] that the percentages [were] weight percentages on the total weight of the coated particle.” Id. at 20-21. “A claim will be found indefinite only if it ‘is insolubly ambiguous, and no narrowing construction can properly be adopted . . . .’” Id. at 21 (quoting Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008). Looking at the limitation of the claim, the Court decided to construe the claim as Plaintiffs’ contended because it was the “only reasonable interpretation . . . .” Id. at 22-23.

The Court also addressed Defendant’s arguments regarding the validity of a certain claim. Defendant argued that “Claim 1 of the ‘215 patent [was] inoperative as calling for the impossible.” Id. at 25. The Court ultimately decided to reserve its decision on that issue due to the early stage of the litigation. Id.

UCB, Inc. et al. v. KV Pharmaceutical Company, C.A. 08-223-JJF (D. Del. Aug. 18, 2009)

August 28, 2009

New District of Delaware Intellectual Property Case Filings

8/6: Baxter Healthcare Corporation, Baxter International Inc., Baxter Healthcare SA v. Minrad International Inc., Piramal Healthcare Ltd. and Piramal Healthcare Inc. (patent infringement)
8/6: Ethicon Endo-Surgery Inc. v. Hologic Inc. and Suros Surgical Systems, Inc. (patent infringement)
8/7: Nuance Communications Inc. v. Vlingo Corp. (patent infringement)
8/10: Courtesy Products LLC v. American Tex-Chem Corp. (patent infringement)
8/11: Redbox Automated Retail LLC v. Twentieth Century Fox Home Entertainment LLC (copyright infringement)
8/13: Life Technologies Corp. v. Bio-Rad Laboratories, Inc. (patent infringement)
8/13: Biovail Laboratories International SRL v. Cary Pharmaceuticals Inc. (patent infringement)
8/13: Ateliers De La Haute-Garonne and F2C2 System SAS v. Broetje Automation, USA, Inc. and Broetje-Automation GMBH (patent infringement)
8/14: Controvery Music, For Chase Muzic Inc., Sony ATV Tunes, LLC, Beyonce Publishing, Hitco Music Publishing, et al. v. Ice Lounge LLC and Justin Ruiz (copyright infringement)
8/18: Redbox Automated Retail LLC v. Warner Home Video (antitrust litigation)
8/19: Telecommunication Systems Inc. v. Sybase Inc. and iAnywhere Solutions Inc. (patent infringement)
8/20: Natural Alternatives International Inc. v. Vital Pharmaceuticals Inc. and DNP International Co. Inc. (patent infringement)
8/21: Xpoint Technologies Inc. v. Microsoft Corporation, Intel Corporation, Marvell Technology Group Ltd., Marvell Semiconductor Inc., Hewlett Packard Co., et al. (patent infringement)
8/21: LadaTech LLC v. Illumina Inc. (patent infringement)
8/21: Congoluem Corporation v. Cryntel Enterprises Ltd. Inc. (patent infringement)
8/21: Aventis Pharama S.A., Sanofi-Aventis US LLC v. Sun Pharmaceutical Industries Ltd., Sun Pharmaceutical Industries Inc., Sun Pharma Global FZE, Caraco Pharmaceutical Laboratories Ltd. (patent infringement)
8/24: Teleconference Systems LLC v. Hewlett-Packard Company, AstraZeneca Pharmaceuticals LP, Dow Chemical Company, Advanced Micro Devices, Inc., Dreamworks Animation SKG, et al. (patent infringement)
8/26: Evonik Degussa GmbH v. Materia Inc. (patent infringement)
8/27: Celgro Corporation v. Cambrex Corporation (patent infringement)
8/27: IQ Biometrix Inc. v. FlowPlay Inc., Gaia Interactive Inc., Oddcast Inc., UGO Entertainment Inc., Corbis Corp., et al. (patent infringement)
8/28: Bristol-Myers Squibb Co., Bristol-Myers Squibb Pharma Co. v. Mylan Pharmaceuticals Inc., Matrix Laboratories Ltd. and Matrix Laboratories Inc. (patent infringement)
8/28: King Pharmaceuticals and Meridian Technologies Inc. v. Teva Parenteral Medicines Inc. v. Teva Pharmaceuticals USA, Inc. (patent infringement)
9/1: Dorman Products Inc. v. Dayco Products LLC (trademark infringement)
9/4: Hospira Inc. and Orion Corporation v. Sandoz International GmbH and Sandoz Inc. (patent infringement)
9/4: Network Gateway Solutions LLC v. Adtran Inc., Audiocodes Ltd., Avaya Inc., Cisco Systems, Inc., et al. (patent infringement)
9/4: Purdue Pharma Products LP, Napp Pharmaceutical Group Ltd., Ortho-McNeil-Janssen Pharmaceuticals Inc. v. Paddock Laboratories Inc. (patent infringement)
9/9: Andrew LLC v. TruePosition Inc. (patent infringement - declaratory judgment)

August 28, 2009

Judge Sue L. Robinson: Bifurcation of Damages and Willfulness for Discovery and Trial

In recent cases, Judge Robinson has been making it her practice to bifurcate damages and willfulness in patent cases for purposes of both discovery and trial. Two recent decisions elaborate on this procedure and the Court's reasoning behind bifurcating damages and willfulness "in all but exceptional patent cases." See The Dutch Branch of Streamserve Development AB v. Exstream Software, LLC, C.A. No. 08-343-SLR, Memo. Order (D. Del. Aug. 26, 2009); see also Robert Bosch LLC v. Pylon Manufacturing Corp., C.A. No. 08-542-SLR, Memo. Order (D. Del. Aug. 26, 2009).

Noting the substantial patent docket pending in the District of Delaware, Judge Robinson states that in her experience "discovery disputes related to document production on damages and the Daubert motion practice related to damages experts are a drain on scarce judicial resources." See, e.g., The Dutch Branch of Streamserve Development, Memo. Order at 1-2. Furthermore, Judge Robinson notes that without bifurcation "the burden imposed on a jury in a patent trial is extraordinary" as they are to determine not only the technical issues surrounding an infringement and invalidity determination but then must "understand the complexities of the relevant order to determine the economic consequences of their liability decisions." Id. at 2. It is because of these burdens that Judge Robinson believes that "bifurcation promotes the just and efficient resolution of what damages, if any should be awarded by: (1) giving the parties - those with the most expertise in the market - the first opportunity to translate the Federal Circuit's final legal decision on liability into practical commercial consequences; or (if the parties cannot resolve the matter) (2) giving the damages jury a focused dispute to resolve." Id. at 2.

In the Bosch case, the plaintiff further argued that willfulness cannot be bifurcated from infringement because it is entitled to have the same jury hear and decide both infringement and willfulness under the Seventh Amendement. Robert Bosch LLC, C.A. No. 08-542-SLR, Memo. Order at 2. The Court rejected this argument, consistent with Federal Circuit precedent that willfulness and infringement require different proof and therefore need not be tried at the same time and further noted that "willfulness is a damages issue, not a liability issue." Id. at 2-3. Judge Robinson also noted that although she "respect[s] plaintiff's right to a jury trial on the issue of willfulness" she "quer[ies] whether this right is so broad as to trump a court's right to manage its caseload, especially when the potential costs...are so high." Id. at 3 (noting in a footnote those costs being that willfulness "is an intrusive and inflammatory issue to discover and try").

The Dutch Branch of Streamserve Development AB v. Exstream Software, LLC, C.A. No. 08-343-SLR, Memo. Order (D. Del. Aug. 26, 2009).

Robert Bosch LLC v. Pylon Manufacturing Corp., C.A. No. 08-542-SLR, Memo. Order (D. Del. Aug. 26, 2009).

August 21, 2009

Judge Mary Pat Thynge: Jury Verdict

On August 18, 2009, a Delaware jury returned a verdict finding that, Inc. did not infringe two of the three patents owned and asserted by Cordance Corporation. The jury found those two patents valid. The jury did find that infringed 4 of 5 asserted claims of the third patent-in-suit but that was the same patent that the jury found invalid. The verdict form is attached below.

Cordance Corp. v., Inc., C.A. No. 06-491-MPT, Verdict Form (D. Del. Aug. 18, 2009).

August 19, 2009

Judge Farnan: A defendant MUST avail themselves of every opportunity to plead inequitable conduct with particularity

Judge Farnan recently granted Plaintiffs’ Motion to Strike Defendants’ Motion for Summary Judgment of Unenforceability based upon defendants’ failure to plead their inequitable conduct defense with particularity; and defendants’ subsequent failure to take any action to amend their Answer. Laboratory Skin Care, Inc., et al. v. Limited Brands, Inc. et al., C.A. No. 06-601-JJF (D. Del. Aug. 17, 2009). Defendants argued that they could not have amended their answer to plead inequitable conduct with particularity before summary judgment because a crucial deposition transcript was withheld by plaintiffs until the day before discovery closed. Id. at 7. The Court disagreed noting several opportunities defendants had to obtain the necessary information to plead their current inequitable conduct defense theory with particularity, including the opportunity to move to amend after defendants received the deposition transcript or concurrently with their summary judgment motion. Id. at 8-9.

Laboratory Skin Care, Inc., et al. v. Limited Brands, Inc. et al., C.A. No. 06-601-JJF (D. Del. Aug. 17, 2009)

August 17, 2009

Judge Robinson: Prior decision of inequitable conduct on remand from Federal Circuit REVERSED

In Cordis Corporation v. Boston Scientific Corporation and Scimed Life Systems, Inc., C.A. No. 98-197-SLR (D. Del. Aug. 10, 2009), Judge Robinson reversed her March 2002 decision that nondisclosure of material prior art during prosecution of the patent-at-issue was inequitable conduct which tainted the prosecution of another patent, making both unenforceable. Id. at 1. The Federal Circuit had remanded, in June 2006, for additional findings of fact regarding deceptive intent and how the later patent was tainted by the inequitable conduct related to the first patent. Id. In reversing her prior decision, Judge Robinson applied the standard reinforced by the Federal Circuit in 2008 in Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 538 F.3d 1365 (Fed. Cir. 2008) related to the evidentiary burden to be met in order to prove inequitable conduct. Id. at 5-6. Although Judge Robinson determined that a material reference was not disclosed to the PTO, “defendants must prove, by clear and convincing evidence, that [the patentee] and/or [his attorney] ‘made a deliberate decision to withhold a known material reference.’” Id. at 8 (citing Star Scientific, 537 F.3d at 1366) (emphasis added). Judge Robinson determined that the clear and convincing standard had not been met by defendants because “the evidence cited in support of finding inequitable conduct is not clearly more compelling than the evidence cited in support of not finding inequitable conduct.” Id. at 8-9. In addition, nondisclosure of the material prior art could not carry over to the later patent because the prior art in question was identified in connection with this later patent and reviewed by the PTO examiner. Id. at 9-10.

Cordis Corporation v. Boston Scientific Corporation and Scimed Life Systems, Inc., C.A. No. 98-197-SLR (D. Del. Aug. 10, 2009)

August 17, 2009

Judge Robinson: Despite scheduled mediation, litigation shall move forward

In Wellman, Inc. v. Eastman Chemical Co., C.A. No. 07-585-SLR (D. Del. Aug. 13, 2009), Plaintiff filed an Emergency Motion to Modify Scheduling Order requesting postponement of deadlines for filing Daubert and Summary Judgment motions until after mediation. Judge Robinson denied Plaintiff's motion stating that “[m]ediation was scheduled with the present deadlines in place, the parties have not indicated that settlement is likely (and, therefore, the motion practice wasteful), and any movement of summary judgment deadlines puts the trial date at risk.” Id.

Wellman, Inc. v. Eastman Chemical Co., C.A. No. 07-585-SLR (D. Del. Aug. 13, 2009)

August 7, 2009

Eduardo C. Robreno: Motion to compel answers to claim construction interrogatory GRANTED

In Inventio AG v. Thyssenkrupp Elevator Americas Corp., C.A. No. 08-874-ER, at 2 (D. Del. July 31, 2009) Defendants filed a motion to compel answers to an interrogatory requesting construction of claims Plaintiff contends were infringed by Defendants. Plaintiff initially responded objecting to the interrogatory as premature and eventually responded that Plaintiff would “provide claim constructions in due course as required by the Scheduling Order in this case.” Id. at 3. In support of their motion Defendants cited district court decisions compelling claim construction interrogatories, none of which were from the District of Delaware. Id. at 5 n.1. Judge Robreno granted Defendants motion stating that “Plaintiff has represented to the Court that the claims it is pursuing are warranted under existing law and that they have evidentiary support. Thus, Plaintiff is in a position to articulate which claim terms Defendants have infringed.” Id. at 6.

Inventio AG v. Thyssenkrupp Elevator Americas Corp., C.A. No. 08-874-ER (D. Del. July 31, 2009)

August 7, 2009

New District of Delaware Intellectual Property Case Filings

7/29: AngioDynamics Inc. v. Vascular Solutions, Inc. (patent infringement)
7/30: Square Ring, Inc. v. John Doe-1, John Doe-2, John Doe-3, John Does 4-10, Ustream TV Inc. (trademark) (cable system piracy)
7/31: Genzyme Corporation v. Roxane Laboratories Inc. (patent infringement)
8/3: Enhanced Security Research LLC, Security Research Holdings LLC v. CISCO Systems, Inc., International Business Machines Corporation, Check Point Software Technologies, Ltd., Check Point Software Technologies Inc., SonicWALL Inc., 3Com Corporation, Nokia Corporation, Nokia Inc., Fortinet Inc. and Sourcefire Inc. (patent infringement)
8/3: SeaChange International Inc. v. Arris Group (declaratory judgment - patent infringement)
8/4: Re/Max International Inc. v. Riale Realty and Tim Reale (trademark infringement)

August 6, 2009

Sue L. Robinson: Claim Preclusion and the Successive Infringement Suit

In a recent decision, district judge Sue L. Robinson addressed the unsettled issue of whether a plaintiff may accuse the same product of infringement in successive suits. Answering in the affirmative, the Court held that a party can maintain a second cause of action so long as the injury alleged in the second suit arises from acts that post-date those considered in the first action.

Analyzing the issue as one of claim preclusion, the Court explained its reasoning:

“A judgment cannot be give the effect of extinguishing claims which did not then even exist. Defendants did not have FDA approval to market the [accused product] in 2005. Plaintiff could not have anticipated when FDA approval, and subsequent marketing and U.S. sales . . . would have commenced. Plaintiff could not have accurately predicted the amount or value of such sales in 2005, nor could the availability of any non-infringing alternatives been assessed . . . ."

As a result, “[t]he conduct at issue in this litigation occurred after the first judgment and could not possibly have been sued upon in the 03-027 case.”

With this decision, it appears that the continuing-tort theory of patent infringement is alive and well in the District of Delaware.

Cordis Corp. v. Boston Scientific Corp., C.A. No. 08-779-SLR (D. Del. July 21, 2009) (Robinson, J.).