May 22, 2012

Chief Judge Sleet construes claims relating to topical corticosteroid.

In a recent claim construction order, Chief Judge Sleet construed the following claims from two patents relating to plaintiff Stiefel Laboratories, Inc.’s OLUX-E® (clobetasol propionate) Foam, 0.05%:

“occlusive agent”

“an amount sufficient to form an occlusive layer on the skin, in use”

“an amount up to 50% by weight, based on the total weight of the composition”


Stiefel Laboratories, Inc. v. Perrigo Israel Pharmaceuticals Ltd., C.A. No. 10-592-GMS (D. Del. May 11, 2012).

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May 18, 2012

Judge Stark: Claim Construction in HIV Drug Case

Judge Stark recently issued a Markman opinion in Bristol-Myers Squibb Co. v. Mylan Pharmaceuticals Inc., C.A. No. 09-651-LPS (D. Del. May 16, 2012).  The Court construed the following claim terms of patents related to the reverse transcriptase inhibitor, Efavirenz:

-    “Form 1,” “Form 2,” and “Form 4”
-    “Form I,” “Form II,” and “Form III”
-    “Characterized by”
-    “Comprising 4 (or 6) or more 2θ values selected from the group consisting of”
-    “Characterized by a differential scanning calorimetry thermogram having a peak at about 108° C to about 110° C”
-    “Form 5”
-    “No detectable peaks”

Judge Stark noted that “the parties’ respective positions [on several disputed terms] reveal underlying factual disputes that should be resolved at trial rather than as part of claim construction.”  While construing the terms in question, he found that there were several “matters on which the Court will need to receive testimony.  Therefore, the Court will reserve judgment on these questions and the ultimate indefiniteness determination for trial.”  Id. at 14.  Judge Stark also refused to consider Plaintiff’s attempted modification after the Markman hearing of “their originally proposed construction to conform with the Court’s previous constructions of similar ‘Form’ terms in a separate case involving different patents. . . .  In view of Defendants’ objections, as well as Plaintiffs’ representations that their proposal ‘does not change the claim scope’ the Court will not consider Plaintiffs’ modified proposal.”  Id. at 8 n.2.

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May 14, 2012

Magistrate Judge Burke denies Rule 60 motion to strike expert report based on newly discovered evidence purported to show bad faith delay in serving it.

Magistrate Judge Burke recently denied a Rule 60 motion filed by Sandoz to strike Wyeth’s microbiology expert report served after the expert report deadline. Wyeth Holdings Corp., et al., v. Sandoz, Inc., C.A. No. 09-955-RGA-CJB (D. Del. May 10, 2012). Earlier in the litigation, Sandoz had moved to strike the same expert report, arguing that Wyeth withheld it in bad faith until after the deadline for expert reports with the goal of springing it on Sandoz late in the litigation. Id. at 4. In response to Sandoz’s earlier motion, Wyeth argued that it had not planned to serve a microbiology expert report at all until it received a microbiology expert report from Sandoz. Id. Ruling on Sandoz’s earlier motion to strike, the Court found no evidence of bad faith conduct by Wyeth, but struck a number of paragraphs that were not directly responsive to issues raised for the first time in Sandoz’s report. Id. at 2, 4.

Sandoz later filed a motion to strike the same expert report, this time under Rule 60 and on the theory that newly discovered evidence obtained during the deposition of Wyeth’s microbiology expert undercut Wyeth’s previous claim that it did not intend to serve a microbiology report until it received one from Sandoz. Id. at 3-4. Specifically, Sandoz learned during the deposition that—contrary to Wyeth’s prior representations that it did not even contact its microbiology expert until after it received Sandoz’s microbiology report—Wyeth actually had retained its microbiology expert many months prior to the expert phase of the litigation. Id. at 4.

Addressing the motion at issue, the Court explained that Sandoz carried a heavy burden of showing that the newly discovered evidence “(1) is material and not merely cumulative . . .; (2) could not have been discovered [previously] through the exercise of reasonable diligence; and (3) would probably have changed the [previous] outcome.” Id. at 2-3. The Court added that Sandoz’s burden was higher still because the exclusion of critical evidence is “an extreme sanction” “not normally to be imposed absent a showing of willful deception or flagrant disregard of a court order . . .” Id. (quoting In re Paoli R.R. Yard PCB Litig., 35 F.3d 717, 791-92 (3d Cir. 1994)).

The Court explained that there was no dispute that the evidence discovered during the deposition of Wyeth’s microbiology expert was not cumulative of evidence previously known to the Court and Sandoz, satisfying the first prong of the Rule 60 analysis. Id. at 5. The Court found, however, that Sandoz could not satisfy the second prong because Sandoz could have, through the exercise of reasonable diligence, learned when Wyeth retained its expert if that information was truly critical to the first motion to strike. Id. at 5-6. Finally, the Court found that even had it known of the newly discovered evidence during the first motion briefing, it probably would not have changed the outcome of that motion—although the new evidence might change one of the five Pennypack factors (bad faith), it would not change the remaining four factors. Id. at 6 (referring to Myers v. Pennypack Woods Home Ownership Ass’n, 559 F.2d 894, 904-05 (3d Cir. 1977)). The Court explained that even assuming the “bad faith” Pennypack factor would change based on the new evidence, the overall balance of the Pennypack factors would not shift far enough to justify the exclusion of Wyeth’s expert report. Id. at 7. Moreover, the Court added that the new evidence regarding when Wyeth “retained” its microbiology expert would not have altered its previous conclusion because the relevant issue was not how early the expert was retained, but instead was how early Wyeth planned to serve an expert report from him. Id. at 8-9. The new evidence did not shed any light on that question. Id.

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May 9, 2012

Judge Robinson Denies Several Motions to Dismiss but Indicates that She Might Consider Early Claim Construction

Judge Robinson recently issued a memorandum order in Cyberphone Systems, LLC v. Cellco Partnership, et al., C.A. Nos. 11-827-SLR through 11-835-SLR (D. Del. Apr. 30, 2012), denying various motions of certain defendants to dismiss the claims against them.  Among these were motions based on the argument that, although CyberFone filed its complaints on the day before the America Invents Act took effect, these pre-AIA complaints violated Federal Rule of Civil Procedure 20 because they did not “allege joint infringement, or any relationships or common activities among the individual defendants.”  Id. at 2.  Judge Robinson initially noted that “severance, not dismissal, is the correct remedy for misjoinder.”  She then refused to exercise her discretion to sever the claims.  Id. at 2-3.  Similarly, she refused to sever claims against cellular carriers from claims against cellular handset manufacturers based on the customer suit exception.  Id. at 3-4.

Judge Robinson also denied several motions to dismiss “improper” infringement allegations, finding that they complied with Form 18, and denied several motions to dismiss that related to the adequacy of CyberFone’s direct infringement allegations.  She stated:  “[t]he court is not prepared to engage in the claim construction exercise at this stage of the proceedings, with no context whatsoever provided by discovery or a motion practice.”  Id. at 4.  “The court will discuss with the parties, however, the need for an early claim construction of dispositive limitations, once a full and fair exchange of fundamental documents has been accomplished.”  Id. at 4 n.6.

Finally, Judge Robinson reaffirmed her recent decision in Walker Digital that “a defendant’s receipt of the complaint and decision to continue its conduct despite the knowledge gleaned from the complaint satisfies the requirements of Global-Tech [that the defendant have knowledge of the patent].”  On this basis, she refused to dismiss various claims of indirect infringement.  Id. at 6.

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May 8, 2012

Motion for fees by defendants who prevailed on summary judgment denied without prejudice.

Judge Robinson recently denied, without prejudice, a motion for fees (and motion for joinder) filed by defendants who prevailed on summary judgment. Apeldyn Corp. v. AU Optronics Corp., et al., C.A. No. 08-568-SLR (D. Del. May 3, 2012). The Court noted that under Rule 54(b)(2)(B), it had discretion either to rule on the motion, to defer ruling on the motion, or to deny the motion without prejudice. Id. at 3. Here, because the defendants prevailed on summary judgment and the plaintiff subsequently appealed the decision to the Federal Circuit, the Court exercised its discretion and denied the motion without prejudice, explaining that “[i]f the Federal Circuit affirms, defendants may request a briefing schedule on a joint motion for fees.” Id. at 4.

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May 4, 2012

Judge Robinson Issues First Transfer Opinions in Patent Cases Post-Link_A_Media

Judge Robinson recently decided two motions to transfer, her first in patent cases since the Federal Circuit’s decision in Link-A-Media.  In Helicos Biosciences Corp. v. Illumina, Inc. et al., C.A. No. 10-735-SLR, at 3 (D. Del. May 3, 2012), Judge Robinson detailed the  Courts of Appeal’s history of allowing “civil action[s] for patent infringement [to] be brought in the judicial district in which the defendant was incorporated.”  Id. at 3.  As Judge Robinson explained, “by the time Jumara issued in 1995, there was a recognized historical continuum that served as the backdrop for the Third Circuit’s analysis.  First, a defendant’s state of incorporation had always been a predictable, legitimate venue for bringing suit.  Second, a plaintiff, as the injured party, generally had been ‘accorded [the] privilege of bringing an action where he chooses.’”  Id. at 6 (citations omitted).  Indeed, she noted, “the risk associated with the exercise of [judicial] discretion was also recognized . . . as ‘assigning to the trial judge the choice of forums, a prerogative which has previously rested with the plaintiff.’”  Id. (citations omitted).  Judge Robinson noted further that, “[a]lthough transfer is a discretionary decision on the part of a district judge, . . . clearly the Federal Circuit expects an analysis of all the Jumara factors in connection with any transfer decision issued by this court.”  Id. at 8.  She therefore proceeded to address each Jumara factor in turn, explaining why each factor either weighed for or against transfer, or was neutral.  Id. at 9-14.
Ultimately, Judge Robinson found that one factor favored transfer.  Considering the “practical considerations that could make the trial easy, expeditions, or inexpensive” she noted that “[t]he court in Delaware has been criticized for managing its patent docket without the aid of local rules, allowing the judges to vary their case management procedures over time and/or from case to case[,] . . . encouraging parties to settle their disputes, but not shying away from resolving disputes through the adversarial process (including trial) if the parties fail in their efforts to craft a business solution[,] . . . expecting the corporate citizens of Delaware to make themselves available to litigate in Delaware, as has been their historical obligation, and [] making observations about the realities of patent litigation gleaned from the (not insubstantial) experiences of its judges.”  Despite these critiques of the Court, she found that this factor favored transfer, as “trial in the Northern District of California would be easier and less expensive for the defendants.”  Id. at 12.  Because only one factor favored transfer, however, Judge Robinson determined that “defendant [had] not tipped the scales of justice in favor of transfer.”  Id. at 14. 
Similarly, in Cellectis S.A. v. Precision Biosciences, Inc., C.A. No. 11-173-SLR (D. Del. May 3, 2012), Judge Robinson denied a motion to transfer to the Eastern District of North Carolina .  Id. at 18.  Judge Robinson analyzed each Jumara factor.  Finding that two of the eleven factors – “the convenience of the parties” and “practical considerations that could make the trial easy, expeditious, or inexpensive” – weighed in favor of transfer, Judge Robinson concluded that the defendant did not put forth enough evidence to tip the scale in favor of transfer.  Id. at 15-18.


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May 4, 2012

Jury verdict: all patents valid, infringement on both sides.

On April 27, 2012, the jury returned a verdict in Power Integrations, Inc. v. Fairchild Semiconductors International, Inc., et al., C.A. No. 08-309-LPS. The case involved infringement allegations by both the plaintiff and the defendants involving a total of six patents related to DC output power supplies or power converters. The jury found that Fairchild literally infringed, and induced the infringement of, two of Power's four asserted patents (U.S. Patents No. 6,249,876 and 6,107,851). Power was found to have infringed under the Doctrine of Equivalents one of Fairchild’s two asserted patents (U.S. Patent No. 7,259,972). The jury found that none of the asserted patents were invalid as anticipated or obvious. Because this case was bifurcated, willfulness and damages have not yet been tried.

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May 4, 2012

Judge Burke Denies Motion to Compel in ANDA Case, Requires That Document Requests be Limited to "Narrow Categories" and Focused on the ANDA Product at Issue

In Medicis Pharmaceutical Corp., et al. v. Actavis Mid Atlantic LLC, C.A. No. 11-409-LPS-CJB, Judge Burke denied plaintiffs’ motion to compel production of documents on the grounds that the document requests were “substantially overbroad.” Id. at 4. By their motion, plaintiffs sought to compel production of “all documents referring or relating to” defendant’s use of certain ingredients in products other than the ANDA product at issue in the litigation. Id. at 1. Plaintiffs argued that the documents were relevant to their claim of infringement under the doctrine of equivalents. Id. at 2-3. Specifically, plaintiffs argued that the documents and underlying ingredient information they were seeking was discoverable, in part, because “evidence that [defendant] has substituted or interchanged these ingredients in its other products would demonstrate that [the ingredients] are equivalent in its proposed generic product.” Id. at 3. Defendant countered, arguing that plaintiffs’ requests were overbroad and, thus, improper under the rules. Defendant noted that, for example, any one of its more than 1,400 products could fall within the scope of plaintiffs’ requests, “whether or not that product related in any way to the ANDA product.” Id. at 3. The Court agreed, concluding that plaintiffs’ requests were, indeed, “substantially overbroad” and “not focused on the ANDA product or similar products” at issue in the case. Id. at 4. In its analysis, the Court noted that the document requests, as written, implicated “any product that happens to contain one of the ingredients.” Id. at 4. The Court also commented on the “limited relevance” of any such documents in comparison to the burden and expense associated with defendant having to conduct such an “open-ended search.” Id. at 5. In its ruling, the Court ordered that the document requests be “limited to certain narrow categories of [defendant’s] products” that are more closely related to the ANDA product at issue. Id. at 5-6.

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April 30, 2012

Judge Robinson Denies Motion to Dismiss and Rule 11 Motion for Sanctions, Ruling That Dismissal Would be Premature and Sanctions Inappropriate at Early Stage of the Case

In Technology Innovations, LLC v., Inc., C.A. No. 11-690-SLR, Judge Robinson denied defendant’s motion to dismiss for failure to state a claim and its motion for sanctions under Rule 11. Id. at 1. Plaintiff filed suit against defendant for infringement of two patents-in-suit. Id. at 1-2. In the complaint, Plaintiff alleged that certain of defendant’s e-book products infringed the patents-in-suit. Id. at 2. In response, defendant moved to dismiss the allegations involving one of the patents-in-suit under Rule 12(b)(6). Id. at 2. Specifically, defendant argued that the complaint failed to “allege sufficient facts to support a claim of infringement” of at least one of the patents-in-suit. Id. at 2. In addition, defendant argued that “there is no possible construction for ‘book’ that would cover [any of defendant’s products]” and “therefore, claim construction proceedings [were] not necessary,” and at least one of the patents-in-suit “should be dismissed from the case.” Id. at 3. Plaintiff, on the other hand, argued that the issue was one of claim construction and that dismissal under Rule 12(b)(6) was inappropriate. Id. at 3-4. The Court agreed. Id. at 4. In denying defendant’s motion, the Court made clear that it was “not prepared to engage in a claim construction exercise . . . at this stage of the proceedings, with no context provided by discovery or a motion practice.” Id. at 4. The Court concluded that the complaint “passes muster under Rule 8” and that dismissal based on the current record would, therefore, be “premature.” Id. at 4-5.
In support of its Rule 11 motion for sanctions, defendant argued that sanctions against plaintiff were appropriate because there was “no possibility” of infringement by defendant’s accused products. Id. at 5. The Court disagreed, declining to “award sanctions at this early stage of the case.” Id. at 5. In, however, denying defendant’s Rule 11 motion without prejudice, the Court warned that it would “entertain a renewed motion [for sanctions] if it is later determined, after discovery and a full claim construction record, that plaintiff’s assertion . . . against defendant’s products was so lacking in merit that the imposition of sanctions is warranted.” Id. at 5.

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April 30, 2012

Judge Burke construes claim terms of patent related to aircraft seating systems

In Virgin Atlantic Airways Ltd. v. Delta Airlines, Inc., C.A. No. 11-61-LPS-CJB (D. Del. Apr. 27, 2012), Judge Burke issued a Report and Recommendation construing the claim terms of U.S. Patent No. 7,469,861 entitled “Seating System and a Passenger Accommodation Unit for a Vehicle.”  The ‘861 patent discloses a seating system “by which the passenger seats are oriented at an angle to the aisle . . . of the plane.”  Id. at 2.  The principal focus of the ‘861 patent “appears to be on seating systems that convert to a ‘substantially flat bed.’”  Id.  Judge Burke construed the following claim terms:

“substantially flat bed”



“substantially horizontal surface”

“upper sleeping surface”

“about the same height”

“usable space to a passenger”

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