Delaware IP Law Blog

On Wednesday, Judge Sleet issued a claim construction order in Allergan, Inc. v. Watson Laboratories, Inc., C.A. No. 09-51 (D. Del. Dec. 8, 2010) (order). The following ten terms were construed:

1. "Delayed release"
2. "Particulates"
3. "Particulates, at least a portion of which releases trospium chloride in the lower gastrointestinal tract"
4. "Provides steady state blood levels of trospoum that are comparable to steady state blood levels of trospium achieved with twice daily administration of 20 mg immediate release trospiumm tablets"
5. "Maximum toxic blood or plasma concentration"
6. "Minimixing the occurrence of adverse side effects following oral administration of an immediate release formulation containing 40 mg of trospoum chloride"
7. "Minimum therapeutically effective blood or plasma concentration"
8. "About"

9. "In which at least a portion of said trospium chloride is contained in a delayed release formulation, which releases trospium chloride in the lower GI tract."
10. "Release controlling polymer"

Allergan, Inc. v. Watson Laboratories, Inc., C.A. No. 09-51 (D. Del. Dec. 8, 2010) (order)

In analyzing the summary judgment motions of the parties in Kenexa Brassring Inc. v. Taleo Corp., Judge Robinson needed to address whether the groups of accused products “function in the same manner for purposes of infringement.” C.A. No. 07-521-SLR, Memo. Op., at 9 (D. Del. Nov. 18, 2010). The defendants responded to a contention interrogatory asking why “each” product did not infringe by referring to the products “collectively” and did not explain how any product functioned differently from the other. Id. at 6. The 30(b)(6) designees also testified that they could not think of any distinguishing features between the products. Id. at 6-7. The Court found that defendants “cannot group their products together when asked whether they differ, then turn around and claim that plaintiff has failed to meet its burden of showing that they operate in the same way.” Id. at 10-11.

Kenexa Brassring Inc. v. Taleo Corp., C.A. No. 07-521-SLR, Memo. Op., at 9 (D. Del. Nov. 18, 2010).

Last week, Chief Judge Gregory M. Sleet issued a decision that construed the claims of an inhalation-anesthetic patent. The Court construed five terms and phrases in the underlying ANDA litigation:

"A volatile liquid anaesthetic"
"A tubular outlet through which said volatile liquid anaesthetic agent can leave said reservoir and vapor can enter said reservoir when said valve is open"
"Free end"
"Perimeter"
"Means for forming a connection between said container and a vaporizer to retain said container on the vaporizer, said means comprising a formation formed on the outer surface of said tubular outlet which presents a surface facing in a direction substantially opposite to the direction in which said volatile liquid anaesthetic agent passes out of said reservoir through said outlet for latching with a cooperating surface provided at the inlet to the vaporizer to which said volatile liquid anaesthetic agent is to be supplied"

Baxter Healthcare Corp. v. Minrad Inc., C.A. No. 09-054-GMS (D. Del. Nov. 29, 2010) (Sleet, C.J.).

In QVC, Inc. v. Your Vitamins, Inc., C.A. No. 10-094-SLR (D. Del. Nov. 29, 2010), Judge Robinson granted a motion to transfer in a false advertising case after it was revealed that the parties were bound by an agreement with a forum selection clause and a choice of law provision. Judge Robinson recognized that "Forum selection clauses are presumptively valid and are entitled to great weight," id. at 4-5, and that the other related factors on the whole favored transfer. The case was transferred to the Eastern District of PA.

The presence of an "unambiguous" forum selection clause distinguishes this case from other recent rulings on motions to transfer, which have generally turned on the degree of connection to the forum.

QVC, Inc. v. Your Vitamins, Inc., C.A. No. 10-094-SLR (D. Del. Nov. 29, 2010)

District judge Sue L. Robinson recently construed the terms of several patents that concern systems and methods for collecting and maintaining information about job applicants. The Court issued its claim construction on seven terms and phrases:

1. "Target data strings"
2. "Each field [being] capable of [accommodating /accepting] . . . [a] data string"
3. "Source data [st]ream"
4. "Displaying a structured form comprised of multiple fields"
5. "Supplying"
6. "Supplemental inquiry form"
7. "Nonuniformly formatted source data streams"

Kenexa Brassring Inc. v. Taleo Corp., C.A. No. 07-521-SLR (D. Del. Nov. 18, 2010) (Robinson, J.).

The vacancies on the D. Del. bench over the past several years are well known. What may not be appreciated, however, is that even with these vacancies, key litigation benchmarks (such as time-to-trial) have not been visibly affected. This is due in part to the contributions of many E.D. Pa. and D.N.J. district judges that have stepped in temporarily to fill the void.

Given this system of rotating visiting judges, is not surprising that E.D. Pa. district judge Robert F. Kelly Sr. issued a decision declining to find that the current state of affairs in Delaware warranted transfer to another jurisdiction.

Presiding in the underlying D. Del. infringement action, the Court noted that court congestion was not a reason to favor a transfer:

"[T]he court congestion factor is neutral in light of the statistical evidence provided by the parties. Although the parties presented various arguments and statistical reports concerning court congestion in the fora at issue, neither side clearly shows that the administrative difficulty resulting from court congestion weighs in favor of one forum over the other. It is important to note, however, that even though there is presently a backlog of cases in Delaware, the cases are being assigned to other district courts in the Third Circuit which are capable of efficiently and expeditiously managing the cases."

Although the Court never explicitly mentioned the past vacancies, it did emphasize that, with the visiting judges in place, concerns about backlogs are unfounded.

Illumina Inc. v. Complete Genomics Inc., C.A. No. 10-649-RFK (D. Del. Nov. 9, 2010) (Kelly, J.).

In ICU Medical, Inc. v. Rymed Technologies, Inc., C.A. No. 07-468-LPS (D. Del. Nov. 23, 2010), Judge Stark recently decided several pending pre-trial motions. In one motion, plaintiff asked that the court exclude a prior claim construction order in a case between plaintiff and another party in the Central District of California. Id. at 3-4. Defendant argued that the evidence from the prior litigation was relevant to willful infringement because the California judge construed some of the same claim terms at issue in the current case. Id. at 4. Judge Stark agreed that the prior claim construction ruling on the same claim terms were relevant to willful infringement because “it was reasonable for [defendant] to rely on the [California court’s] constructions in evaluating whether its products infringed [plaintiff’s] asserted patents.” Id. at 5. Judge Stark noted, however, that the jury will be instructed that the jury may consider this evidence only for evaluation of defendant’s defense to willfulness, and not in evaluating infringement or invalidity of the patents-in-suit. Id.

In another pre-trial motion, defendant sought to preclude plaintiff from offering evidence to show alleged prior incidents of defendant’s copying of plaintiff’s products that are not at issue in the instant litigation. Id. at 11. Plaintiff argued that the evidence was relevant to “copying as a secondary consideration to obviousness, and [defendant’s] intent to willfully infringe [plaintiff’s] patents.” Id. Judge Stark disagreed. “[T]he alleged prior copying . . . of unrelated products is irrelevant to infringement and non-obviousness under Rule 402. . . . Furthermore, the Court agrees with [defendant] that introduction of such contentions would cause substantial delay, wasted time, and confusion because it would require mini-trials to determine whether [defendant or its CEO] actually copied the unrelated . . . devices nearly twenty years ago.” Id. at 12.

ICU Medical, Inc. v. Rymed Technologies, Inc., C.A. No. 07-468-LPS (D. Del. Nov. 23, 2010)

Last week, Judge Robinson granted a motion to stay pending re-examination in Vehicle IP, LLC v. Wal-Mart Stores, Inc., C.A. No. 10-503-SLR (D. Del. Nov. 22, 2010). Citing the September decision in Belden (which denied a motion to stay pending re-examination just before trial), the Court applied a simple three-factor test to determine that a stay is warranted in light of the status of the litigation and the lack of prejudice to the parties. One footnote cited re-examination statistics showing that the average appeal to the patent board takes 234 days, plus an additional 15 months to appeal that determination to the Federal Circuit.

Of note, the Court stated that "[i]f, after six months, the court is not satisfied that the reexamination is moving at a pace whereby reexamination will provide a resolution as promptly as would be otherwise achieved through this litigation, the court may lift the stay." Vehicle, at 5.

Vehicle IP, LLC v. Wal-Mart Stores, Inc., C.A. No. 10-503-SLR (D. Del. Nov. 22, 2010)

Magistrate Judge Thynge recently addressed whether a party is required to produce witnesses for depositions who are employees of its foreign subsidiary, or whether the party should seek that information pursuant to the Hague Convention. Ethypharm S.A. France v. Abbott Laboratories, C.A. No. 08-126-SLR-MPT (D. Del. Nov. 15, 2010). Plaintiff argued that defendant should produce the witnesses to testify because defendant had “control” over information possessed by its wholly-owned subsidiaries. Id. at 5. Specifically, defendant “has the legal right to obtain discoverable information at issue as a result of its acquisition of [the foreign subsidiary] and must produce information sought by [plaintiff] under the Federal Rules of Civil Procedure, rather than requiring [plaintiff] to seek that information pursuant to the Hague Convention.” Id. at 6. Defendant responded that the real issue is that procedures for compelling depositions under the Federal Rules or the Hague Convention cannot be invoked. Id. Specifically, the “foreign nationals at issue are not asserted to be subject to the subpoena power of United States courts, have not been served with deposition subpoenas, and are not asserted by [plaintiff] to be officers, directors, or managing agents of any party to this action.” Id.

Judge Thynge denied plaintiff’s motion to compel defendant to produce employees of its overseas affiliate for depositions. The court agreed with another district court that “Rule 30 of the Federal Rules of Civil Procedure does not require a party to litigation to produce persons for deposition who are merely alleged to be in the party’s control. Rather, a party or any other person can be noticed for deposition, and subpoenaed if necessary. If the person sought for deposition is not within the subpoena power of a United States Court, then procedures according to international treaty must be followed.” Id. at 18 (internal quotation omitted).

Ethypharm S.A. France v. Abbott Laboratories, C.A. No. 08-126-SLR-MPT (D. Del. Nov. 15, 2010)

Last week, Judge Robinson issued a short memorandum order in Eidos Communications v. Skype Tech. SA, C.A. No. 09-234-SLR (D. Del. Nov. 9, 2010), denying a Rule 12(b)(6) motion to dismiss. The motion sought dismissal based on an attached affidavit, which stated that certain steps of an asserted method claim take place only on servers in "Luxembourg, Ireland and the Netherlands." Id. at 6. Thus, the method is not practiced "within the United States" as required by 35 U.S.C. § 271.

Judge Robinson, however, declined to consider the affidavit, holding that it did not "fall within the narrow category of documents considered on a motion to dismiss under Rule 12(b)(6)." Id. at 6 (citing Ricoh Co. v. Oki Data Corp., Civ. No. 09-694-SLR, 2010 WL 3908603 (D. Del. Sept. 30, 2010)). That narrow category includes, among other things, documents attached to the complaint that form the basis of the plaintiff's claims. Eidos, C.A. No. 09-234-SLR, at 3. Without the benefit of the affidavit, the 12(b)(6) motion was denied.

Judge Robinson also refused to convert the motion into a Rule 56 motion for summary judgment, because "there has been no opportunity for reasonable discovery by either party." Id. at 7.

Eidos Communications v. Skype Tech. SA, C.A. No. 09-234-SLR (D. Del. Nov. 9, 2010)