August 28, 2013

Judge Sleet claim construction Order

In a recent claim construction Order, Chief Judge Gregory M. Sleet construed the following terms of U.S. Patent No. RE41,555, entitled “Antibody purification:”

“selectively eluting [the monomeric IgG antibody] from the support” and “the
antibody selectively eluted;”

“monomeric IgG antibody”

GlaxoSmithKline LLC v. Genentech, Inc., C.A. No. 10-799-GMS (D. Del. Aug. 22, 2013).

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August 26, 2013

Jury verdicts stand after Judge Andrews denies all post-trial motions.

Judge Richard G. Andrews recently denied all post-trial motions in a dispute over patented medical devices. St. Jude Medical Cardiology Division, Inc., et al. v. Volcano Corp., C.A. No. 10-631-RGA (D. Del. Aug. 22, 2013). The Court held separate trials on the patents asserted by the plaintiffs and the defendant, with the jury finding in relevant part that (1) defendant did not infringe the asserted claims of plaintiffs’ U.S. Patents No. 6,112,598 or 6,248,083; (2) defendant proved by clear and convincing evidence that plaintiffs’ U.S. Patents No. 5,983,624 and 6,196,989 are invalid as anticipated and obvious; and (3) plaintiffs did not infringe defendant’s U.S. Patent No. 6,976,965 under the doctrine of equivalents. The parties filed a total of six post-trial motions, but the Court denied each, finding that the evidence put before the jury was sufficient to sustain the verdicts.

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August 24, 2013

Judge Stark Denies Motion for Injunction Banning Export of Surgical Products After Finding of Infringement

Judge Stark recently had occasion to consider a patent plaintiff’s request for a temporary restraining order and preliminary injunction filed after a jury found the plaintiff’s patents valid and infringed. The plaintiff, Synthes, asked the court to enjoin exportation of accused products for sales overseas. Depuy Synthes Prods., LLC v. Globus Med., Inc., C.A. No. 11-652-LPS, Memo. Order at 1 (D. Del. Aug. 22, 2013). Judge Stark found, however, that the plaintiff had not demonstrated irreparable harm. Judge Stark’s finding was based on evidence, presented at trail and in the briefing on the motion, showing that consumers use the defendant, Globus’, products for reasons other than the patented features. Judge Stark further pointed out that “[e]ven if Synthes could establish that Globus’ remaining inventory is purchased based on the patented features, ‘lost sales standing alone are insufficient to prove irreparable harm.’” Id. at 2-3 (citations omitted). Accordingly, there was no “clear showing” of a risk of irreparable harm. Finally, Judge Stark found that “Synthes may be adequately compensated through a reasonable royalty.” Id. at 4. For these reasons, Judge Stark denied the motion for a temporary restraining order and preliminary injunction.

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August 24, 2013

Judge Andrews Allows Amendment of Complaints to Assert Additional Patents Against Existing Defendants

Judge Andrews recently granted a patent plaintiff’s motion to file amended pleadings, filed two days before the scheduling order’s deadline “to amend of supplement the pleadings.” “The main thrust of the amended pleadings would be to assert some of the four asserted patents, previously unasserted again some of the seven of the defendants, against those defendants.” HSM Portfolio LLC, et al. v. Fujitsu Ltd., et al., C.A. No. 11-770-RGA, Order at 1 (D. Del. Aug. 20, 2013). Judge Andrews found that “[w]hile there are indeed issues concerning delay and unfair prejudice, I believe that the case is still at a fairly early stage, and any issues of prejudice can be dealt with by extending the schedule.” Id.

Judge Andrews went on to address arguments raised by individual defendants specific to their own cases. In this context, he found that:
1. Two patents possibly subject to a laches defense would be better dealt with “at a later stage of the case”
2. The fact that additional patents would “not generate much in the way of damages” did not demonstrate futility
3. Plaintiffs had not “pleaded facts sufficient to support the argument that Spansion is an agent of [defendant] AMD. Thus, while I will allow the amendment, I expect that AMD will file the motion to dismiss that it has proffered.”

In addition to granting the motion to amend, Judge Andrews also ordered the parties to meet and confer and submit a status report on scheduling within four weeks and ordered that “scheduling deadlines relating to the defendants who opposed the motion to amend . . . during the next six weeks (or until there is an agreed-upon schedule, whichever occurs later)” would not be enforced. Id. at 1-2.

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August 23, 2013

Judge Sleet grants motion to stay pending reexamination

Chief Judge Gregory M. Sleet recently granted defendant's motion to stay pending reexamination. Celorio v. On Demand Books LLC, C.A. No. 12-821-GMS (D. Del. Aug. 21, 2013). In doing so, Judge Sleet examined the following factors: "(1) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party; (2) whether a stay will simplify the issues in question and trial of the case; and (3) whether discovery is complete and a trial date has been set." Id. at 2 n.1 (quotations omitted). Regarding the first factor, Judge Sleet noted that any stay pending reexamination will delay final resolution of the case. Therefore, that fact alone is insufficient to establish that any prejudice from the delay is "undue." Id. As such, the court must look at "sub-factors," such as "the timing of the stay request"; "the relationship between the parties"; "the related question of whether the plaintiff may be compensated through future money damages": and "the status of the reexamination proceedings." Id. Judge Sleet determined that any delay will not result in undue prejudice or present a tactical disadvantage to plaintiff. In particular, Judge Sleet found that because the petition for reexamination and the motion to stay were filed early in the case, the Court could not conclude that defendant was attempting to gain an unfair tactical advantage. Id. Further, plaintiff's five-year delay of filing the case after it became aware of defendant's alleged infringement demonstrated that plaintiff did not consider "this to be a 'time of the essence matter' or that, absent expeditious litigation, he [would] suffer undue prejudice." Id. In addition, plaintiff could be compensated for any delay through money damages. Id.

Regarding simplification of issues, Judge Sleet determined that this factor favored a stay. "[R]egardless of the PTO's conclusion, the results of the reexamination proceeding will aid in simplifying or eliminating the overlapping issues before the court. Indeed, even if the PTO were to ultimately confirm all of the claims, the court would likely benefit from the expert analysis the PTO conducts, thus further simplifying issues before the court." Id. at 3 n.1. Judge Sleet determined that the early stage of the case also favored a stay, as no scheduling order had been entered and no trial date had been set. Id.

Judge Sleet also specifically rejected plaintiff's argument that defendant was "estopped from seeking a stay because it filed a counterclaim for declaratory relief pursuant to the Declaratory Judgment Act ('DJA')." Id. Judge Sleet noted:

Celorio [did] not cite any case law supporting his argument and instead provide[d] citations to cases detailing the parameters of the DJA and rules regarding binding admissions in responsive pleadings. None of the cases Celorio cite[d] suggested that once a party has filed a claim under the DJA, it should be barred from requesting a stay and the court [had] not uncovered such precedent.


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August 21, 2013

Judge Andrews construes claims relating to telephone network technologies

In a recent claim construction opinion, Judge Richard G. Andrews construed seven terms from U.S. Patent Nos. 7,012,916; 7,206,304; 7,903,641; 8,170,008; 8,189,565; 8,204,046; and 8,223,752 (collectively, the “Low Patents”), which each relate to “facilitating the integration of traditional telephone networks with computer networks.” Comcast IP Holdings I, LLC v. Sprint Communications Company et al., C.A. No. 12-205-RGA (D. Del. Aug. 16, 2013). Judge Andrews also construed three terms from an unrelated patent, U.S. Patent No. 6,873,694 (the “’694 Patent”), which teaches “systems and methods to optimize a telephony network.” Judge Andrews construed the following seven terms from the Low Patents:

- “switched telecommunication system I telecommunication system”
- “requesting . . . a communication to be set up through the switched telecommunication
- “telecommunications system control apparatus”
- “URI I uniform resource identifier (URI) I universal resource identifier (URI) I universe
resource name (URN)”
- “DNS-type database system I DNS-type distributed database system”
- “Domain name system signaling”
- “A substantial portion of the number string”

Judge Andrews also construed the following three terms from the ’694 Patent:

- "Dial-up prompt [parameter]"
- "Telephony parameter"
- "Telephone usage of the telephony network"

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August 20, 2013

Judge Andrews denies motion to preclude expert but instructs defendant on the Court's preference for preserving objection at trial and renewing motion post-trial

Judge Richard G. Andrews recently denied defendant Par Pharmaceutical's motion to preclude the testimony of Plaintiff's expert. Novartis Pharms. Corp., et al. v. Actavis South Atlantic LLC, et al., C.A. No. 11-1077-RGA (D. Del. Aug. 16, 2013). Par raised three issues with the expert's testimony: "(1) the 'forced degradation' or 'stress' testing; (2) whether acetaldehyde or anything else is an antioxidant; and (3) why [the expert did] not address, or did not perform, other techniques." Id. at 1. Judge Andrews determined that the second and third issues were not appropriate under Daubert. Regarding the first issue, Judge Andrews noted that the Court's pre-trial "gate-keeper" function is not as important for a bench trial, and so, live testimony and cross-examination would more likely lead to a correct decision about whether the expert's testimony is appropriate under Daubert. Id. Judge Andrews denied Par's motion, instructing Par to preserve the objection at trial by making an objection during the expert's testimony. Judge Andrews further instructed that: "Failure to [object] at the appropriate time will result in the objection being waived"; that "[t]he Court will consider granting a continuing objection"; and that [t]he Court will only consider evidence actually adduced at trial (whether through cross-examination or testimony from other witnesses) in ruling on any renewed motion." Id. at 2.

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August 19, 2013

Judge Robinson orders plaintiff to show cause why it should not be sanctioned for prosecution of allegedly frivolous, eventually withdrawn infringement claim.

Judge Robinson recently granted a motion to dismiss a § 285 counterclaim for attorneys’ fees relating to an allegedly frivolous and eventually withdrawn claim, but ordered the plaintiff to show cause why it should not be sanctioned under Rule 11 for its prosecution of that claim. Technology Innovations, LLC v., Inc., Civ. No. 11-690-SLR (D. Del. Aug. 15, 2013). The plaintiff alleged infringement of two patents, one of which (the ‘407 patent) previously had been asserted in the Southern District of Texas. The defendant claimed that during the course of the litigation in Texas, the plaintiff agreed not to pursue the ‘407 infringement claim because of the “high unlikelihood of infringement.” Id. at 1-2. As a result, when the plaintiff asserted the '407 infringement claim in Delaware, the defendant moved for Rule 11 sanctions. Id. The Court denied that motion without prejudice as premature (previously discussed here). Almost a year later, after the defendant answered, filed counterclaims, and engaged in discovery regarding the ‘407 patent, the plaintiff amended its complaint to remove allegations relating to the ‘407 patent and to provide an affirmative statement of non-liability with respect to that patent. Id. at 2. The defendant answered and asserted a counterclaim under § 285 for attorneys’ fees in connection with the plaintiff’s continued prosecution of the withdrawn allegations. The plaintiff then moved to dismiss that counterclaim.

The Court reviewed the history of § 285, and cases applying it, and concluded that § 285 attorneys’ fees “can only be awarded after the substantive issues in the case have been resolved and the prevailing party has been determined.” Id. at 7. The Court therefore granted the motion to dismiss the § 285 counterclaim, since the “prevailing party” could not be determined until the claims relating to the other asserted patent were tried. Id. at 8. However, the Court noted that “Rule 11 is not circumscribed by the time-oriented limitations of § 285.” Id. at 8. Because the plaintiff continued to assert the ‘407 patent for nearly a year after the Court denied without prejudice the original motion for Rule 11 sanctions, the defendant was forced to respond to the complaint, file counterclaims, and engage in discovery during that time. As a result, Judge Robinson ordered the plaintiff to show cause why its filing of the eventually withdrawn '407 patent infringement claim was not sanctionable under Rule 11. Id at 9.

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August 12, 2013

Judge Andrews Issues Post-Trial Opinion in Avodart ANDA Case

Judge Richard Andrews recently issued his post-trial opinion in an ANDA case concerning a patent covering Glaxosmithkline’s (GSK) Avodart, a drug used to treat enlarged prostate. The defendants, several generic drug companies, stipulated to infringement but challenged the validity of the patent-in-suit on the basis of written description and enablement, as well as anticipation. Following a bench trial in January, Judge Andrews found that the defendants failed to prove any invalidity defense by clear and convincing evidence and, therefore, found in favor of GSK on all issues. Glaxosmithkline LLC v. Banner Pharmacaps, Inc., et al., C.A. No. 11-046-RGA, at 1-3 (D. Del. Aug. 9, 2013).

Judge Andrews first addressed the lack of written description defense. The patent-in-suit claimed both the pharmaceutical compound itself and pharmaceutically acceptable solvates thereof. The defendants argued that the solvates were not adequately described in the patent. Judge Andrews found that the specification need not “independently describe crystalline, precipitated, and reacted solvates as subgroups of the genus of pharmaceutically acceptable solvates” because the claim recited “pharmaceutically acceptable solvates” and there was “no reason why a person skilled in the art would not credit a patentee with possession of a solvate merely because the patentee did not disclose solvates formed by each [of the three] solvation process[es].” Id. at 7-10. Judge Andrews also rejected the defendants’ argument that the Court’s construction of “pharmaceutically acceptable” required the specification to “make clear that the claimed solvates are sufficiently soluble, have sufficient dissolution rates, are physically and chemically stable, and can be produced consistently.” Judge Andrews explained that this interpretation of his construction was too strict and could not be combined with the “high unpredictability as to how a particular solvate form will behave in a body” to require to the specification to provide “specific information as to acceptable solvate forms to ensure the inventors actually possessed the invention.” Id. at 12-13.

Judge Andrews then considered the lack of enablement defense. Judge Andrews found that the quantity of experimentation necessary given the state of the art was not unduly high, because the difficulties cited to by the defendants were difficulties associated with “commercialization of a finished drug product . . . rather than demonstrating how to make a safe solvate with therapeutic effect.” He explained that “finished drug products . . . need not be enabled by the patent.” This factor, along with the amount of direction provided by the patent-in-suit, the defendants’ admission that the level of ordinary skill in the art is very high, and the fact that solvates are well known in the art supported a determination that the claims of the patent-in-suit were enabled. Id. at 22-27.

The defendants also argued the Merck had independently invented the compound at issue and that the patent-in-suit was thus anticipated. The defendants based this argument on a lab notebook, compound data sheet, and article evidencing Merck’s experimentation. But the defendants did not have inventor testimony from anyone at Merck, and Judge Andrews found that there was no evidence that Merck had independently conceived of the invention. The Merck experimentation could not, therefore, serve as an anticipatory reference. Id. at 28-33.

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August 12, 2013

Judge Robinson grants motion for leave to amend induced infringement claim

Judge Sue L. Robinson recently granted plaintiff’s motion for leave to amend its complaint in E.I. Du Pont de Nemours & Co. v. Heraeus Precious Metals North America Conshohocken LLC, C.A. No. 11-773-SLR (D. Del. Aug. 8, 2013). The patent-in-suit relates to the manufacture of solar cells.

The Court had previously dismissed plaintiff’s induced infringement claim because plaintiff did not sufficiently allege specific intent to induce infringement or knowledge of infringement. Id. at 2. Plaintiff now moved to amend its complaint to cure these deficiencies. Id. “Defendant's sole dispute relate[d] to whether plaintiff's proposed amendment claims pre-suit induced infringement,” as plaintiff had originally only asserted a claim for prospective relief. Id. at 3. “To fix this alleged deficiency, defendant submits that plaintiff's proposed amendment be expressly time-limited in every sentence asserting an element of its induced infringement claim by adding ‘since the date [defendant] has been on notice of the [patent-in-suit].’” Id. (internal citations omitted).

The Court concluded that plaintiff’s proposed amendments sufficiently corrected deficiencies in the original claim, but also that these amendments did not allege that defendant knew of the patent earlier than the date of the complaint’s filing. Id. at 4-5. Therefore plaintiff’s claim was limited to the time period beginning at the filing of its complaint. Id. But “[d]efendant's argument that every sentence in the complaint alleging an element of induced infringement must indicate this temporal limitation [was] repetitive and unnecessary.” Id. at 5.

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