In Quantum Loyalty Systems, Inc., et al. v. TPG Rewards, Inc., C.A. No. 09-022-SLR/MPT (D. Del. Mar. 6, 2012), Magistrate Judge Thynge resolved a discovery dispute relating to a defendant's contention interrogatory seeking claim charts showing why the defendant's older, unaccused products would not infringe the patent at issue. The defendant’s interrogatory sought “for the 1993 product . . . a claim chart countering [the defendant’s] chart explaining why this product is not prior art[,]” and “regarding the 2002 product . . . a claim chart showing why it does not meet the limitations of the claims being asserted against the later [2008 product]” (the defendant asserted that the 2002 product was the same as the 2008 product in relevant part, and therefore if the accused 2008 product were found to infringe, the 2002 product would be invalidating prior art). Id. at 4. The plaintiff objected to the interrogatory, asserting that it was a “veiled effort to require [the plaintiff’s] counsel to divulge its work product” and “since [the plaintiff] does not accuse either product of infringement, the interrogatory does not seek relevant evidence . . .” Id. at 3. The Court distinguished the situation from a case relied upon by the plaintiff, explaining that the defendant “is not seeking a comparison between the claim terms at issue with unaccused products of the patentee; rather [the defendant] is requesting discovery from [the plaintiff] related to its invalidity defense . . .” Id. at 5. The Court added, “seeking why the 1993 and 2002 products are not prior art [is] neither a unique nor unusual discovery request.” Accordingly, the Court ordered that the plaintiff respond to the interrogatory and provide the requested claim charts. Id. at 5-6.
As a supporter of the event, Delaware IP Law Blog invites you to attend the US Patent Reform Forum on March 27th in Washington D.C.
** Limited complimentary places left **
New speaker additions at the forum include Douglas Graham, executive director of IDDEX. Douglas is a fervent IP expert and author of books and many articles on Intellectual Assets. He also has had three patents granted and has two further patents pending. Douglas will be giving insight into the ways in which SME's will be affected by the reforms, confronting an issue which often doesn't see much coverage but which will affect many business owners and their counsel.
You will also be hearing from Teresa Stanek Rea, deputy under secretary of commerce for intellectual property and deputy director of the USPTO. Teresa will be giving the rule making overview and delivering perspective of the USPTO in a discussion which is to be chaired by the AIPLA's Todd Dickinson.
The forum’s exciting finale will consist of a debate between Daniel McCurdy and Raymond P. Niro who will be discussing the contentious topic of NPEs or Patent Trolls. Going head to head and engaging directly with this matter from opposing perspectives, these charismatic speakers will provide a unique opportunity to hear from both sides of the fence in the wake of the AIA.
Dan McCurdy, CEO of PatentFreedom, is devoted to the protection of companies against NPEs. His conviction in this defence against the trolls passionate and Dan plays a key role in collating and sharing relevant intelligence with the ‘operating companies’ which he strives to defend.
Conversely, Raymond Niro is known to some as an ‘Original Troll’. Raymond is devoted with equal fervour to the advancement of the NPE cause and can speak with charm and eloquence on the controversial stance which he takes. Together these men will offer a unique opportunity to scrutinise the issues at stake allowing time for audience participation and discussion with the floor also. This is an opportunity not to be missed.
Other speakers include:
• David Kappos, undersecretary of commerce for intellectual property and director, USPTO
• Judge Paul Michel
• Gary Griswold, president and chief intellectual property counsel, 3M Innovative Properties Company and former chairman, 21st Century Patent Reform
• Bob Stoll, former commissioner, USPTO and partner, Drinker Biddle & Reath
• Robert Armitage, senior VP and general counsel, Eli Lilly
• Steven Wood, patent licensing associate, Brookhaven National Laboratory
• Phil Johnson, chief intellectual property counsel, Johnson & Johnson
• Sherry Knowles, principle, Knowles Intellectual Property Strategies
• David T. Beck, Patent Attorney, JDS Uniphase Corporation
• F. Scott Kieff, professor of law, George Washington University
• Brent Bellows, Knowles Intellectual Property Strategies
• Steven I. Weisburd, partner, Dickstein Shapiro
• Gene Quinn, president & founder, IPWatchdog, Inc
For more information about the agenda, please see the brochure here: http://www.managingip.com/pdfs/USPatentForum.pdf.
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* Please note that complimentary places are allocated on a first come, first served basis.
We look forward to meeting you on March 27th.
Plaintiff not required to supplement responses to defendant’s requests for admissions until after Court’s Markman ruling
In Bayer CropScience AG v. Dow Agrosciences LLC, C.A. No. 10-1045 (RBK-JS) (D. Del. Mar. 1, 2012), defendant asked the court to compel plaintiff to supplement its responses to defendant’s requests for admission. Defendant argued that plaintiff’s responses were inappropriate because plaintiff “substituted its own definitions for those [defendant] supplied.” Id. Plaintiff responded that it simply qualified its responses and that the definitions were “misleading and vague[.]” Id. The requests at issue address monooxygenase enzymes and dioxygenase enzymes. Id. The court held that plaintiff did not have to further respond to defendant’s requests until after the Court issues its claim construction ruling because the court’s construction of those terms are, “[i]f not the most important issue in the case, . . . undoubtedly a central issue in the litigation.” Id. at 2.
Judge Stark Adopts Report and Recommendation, Denies Plaintiffs' Motion to Dismiss Inequitable Conduct Counterclaim and Affirmative Defense
Judge Stark recently issued an Order in Wyeth Holdings Corp., et al. v. Sandoz, Inc., C.A. No. 09-955-LPS-CJB, adopting an earlier Report and Recommendation of Magistrate Judge Burke, and denying plaintiffs’ motion to dismiss defendant’s inequitable conduct counterclaim and to strike defendant’s affirmative defense based on inequitable conduct. Id. at 1-2. In the Order, Judge Stark noted that neither party had filed an objection to the Report and Recommendation. Id. at 1. This ruling and the underlying Report and Recommendation are significant because they address the implications of the Fed. Cir.’s recent decisions in Therasense, 649 F.3d 1276 (Fed. Cir 2011) and Exergen, 575 F.3d 1312 (Fed. Cir. 2009), and the impact that the Therasense and Exergen decisions might have on the analysis of and pleading standard for allegations of inequitable conduct going forward.
In Galderma Labs., L.P., et al. v. Tolmar Inc., et al., C.A. No. 10-45-LPS, Judge Stark construed the following disputed claims and claim terms of U.S. Patent Nos. 7,579,377 (the “’377 patent”), 7,737,181 (the “’181 patent”), 7,834,060 (the “’060 patent”), 7,838,558 (the “’558 patent”) and 7,868,044 (the “’044 patent”):
“a thus effective amount” and “effective amount”
“effective for the treatment of”
“an anti-acne effective amount”
“useful for the treatment of”
“pharmaceutical composition which is a gel of”
Claim 5 of the ’060 patent
Claim 24 of the ’060 patent
Claim 35 of the ’181 patent
Claim 36 of the ’181 patent
Claim 40 of the ’044 patent
Claim 41 of the ’044 patent
In Bayer CropScience AG v. Dow Agrosciences LLC, C.A. No. 10-1045 (RBK-JS) (D. Del. Feb. 27, 2012, Magistrate Judge Schneider, sitting by designation, recently granted defendant’s motion to supplement its contentions. Defendant moved to supplement its contentions one week after the parties exchanged their claim construction positions. Defendant wanted to add detail to its previously pled defenses and add additional defenses in light of plaintiff’s proposed constructions. Id. at 2. Judge Schneider found that good cause existed to grant defendant’s motion because “defendant did not recognize the amendments were necessary and appropriate until it received [plaintiff’s] proposed constructions[,]” and that the proposed amendments “flow from’ the constructions the parties exchanged . . . .” Id. at 4. Plaintiff argued that it would be prejudiced by the proposed amendments because it filed an early motion for partial summary judgment based on defendant’s one invalidity contention. Id. at 6. The court was not persuaded, however, because plaintiff’s motion would still be decided on the merits. “The fact that [plaintiff] decided to file its dispositive motion early was the result of its strategic decision. Surely, [plaintiff] could not have anticipated that its motion for summary judgment would automatically ‘lock’ [defendant’ into its contentions.” Id.
Court rejects argument that, under the circumstances, lack of Paragraph IV certification means no act of infringement and no jurisdiction.
In a recent memorandum order, Judge Robinson rejected an ANDA defendant’s argument that the Court lacked subject matter jurisdiction over the parties’ dispute because the defendant’s ANDA did not include a Paragraph IV certification relating to the patents-at-issue. Cephalon, Inc. v. Sandoz, Inc., Civ. No. 11-821-SLR (D. Del. Mar. 1, 2012). The plaintiff originally listed two patents in the Orange Book in connection with its approved NDA for FENTORA®. The defendant then filed an ANDA, which included a Paragraph IV certification addressing those two patents. Id. at 1-2. Litigation followed, but was stayed pending the resolution of an appeal of a related case involving the validity of the same patents. Id. at 2.
Meanwhile, on January 4, 2011, the plaintiff was issued two new patents, which the plaintiff waited almost three months to list in the Orange Book in connection with FENTORA®. The Court noted that the defendant did not, and under 21 C.F.R. § 314.94(a)(12)(vi)(1995) was not required to, file an amended Paragraph IV certification because the plaintiff did not list the two new patents within 30 days of their issuance. Id. at 2. The plaintiff then sought to amend the pleadings in the stayed action to assert the two new patents, but the defendant declined to stipulate to such an amendment. Id. As a result, the plaintiff filed a new complaint against the defendant alleging infringement of the two new patents. Id. at 2-3.
In this second action, the defendant argued that the Court lacked subject matter jurisdiction because its ANDA did not include a Paragraph IV certification with respect to the two new patents, and there was, therefore, no artificial act of infringement under § 271(e)(2) creating jurisdiction. Id. at 3. Judge Robinson disagreed, explaining “Where, as here, the jurisdictional trigger was properly pulled by the filing of an ANDA and the initial Paragraph IV certification . . ., the court’s jurisdiction should not be confined simply because [the defendant] was not required to file an amended Paragraph IV certification. Clearly, [the defendant] was put on notice of the ‘832 and ‘833 patents.” Id. at 10. The Court “decline[d] to elevate form over substance where the purpose of the administrative process has been served and conclude[d] that jurisdiction under § 271(e)(2) [was] established.” Id. at 10-11. Moreover, the Court explained that it could still exercise jurisdiction over the dispute under the Declaratory Judgment Act if the defendant’s argument relating to § 271(e)(2) were accepted, finding that nothing in the Hatch-Waxman Act precludes a court from exercising jurisdiction based solely on the Declaratory Judgment Act. Id. at 11.
Earlier this week, a jury reached a decision in the longstanding dispute between LadaTech LLC and Illumina Inc, finding that Illumina's DNA sequencing products infringe LadaTech's genome technology patent. The case has been pending since August 2009 and began a week-long jury trial on February 21. The jury returned a verdict on the same day that the trial ended, finding direct infringement, infringement by the doctrine of equivalents, indirect infringement by inducement, and that the patents are valid. Damages are bifurcated and have not yet been determined.
Judge Andrews recently considered defendants’ motions to transfer in cases brought by patent owner Robocast against both Apple and Microsoft. See Robocast, Inc. v. Apple, Inc., C.A. No. 11-235-RGA (D. Del. Feb. 24, 2012). Although the cases are separate, both complaints alleged infringement of the same patent, and Microsoft admitted that its transfer motion “rises or falls with Apple’s.” Robocast was a Delaware corporation, but neither Robocast nor Apple had a principal place of business in Delaware. Robocast was headquartered in New York, and Apple sought transfer to the Northern District of California, where it was headquartered. Considering the Third Circuit’s Jumara factors, Judge Andrews found that those factors supported denying the motions to transfer.
The plaintiff’s forum preference and the convenience of the parties as indicated by relative physical and financial condition each supported the plaintiff’s position that the case should not be transferred. Id. at 3-4. Because infringement occurred “all over the United States, including Delaware . . . the claims arise in every judicial district.” Id. at 5. Furthermore, “Apple is omnipresent in everyday life. It is a large and powerful corporation. Robocast consists of its President and two employees. Its founder was at the oral argument on the present motion. Its financial condition pales in comparison to that of Apple.” Id. Because “[t]here is no reason to doubt that if this litigation turns into a war of attrition, Apple will have the upper hand,” the plaintiff’s choice of forum “significantly disfavors transfer.” Id. Apple also argued that “Robocast’s connection with Delaware is entitled to less weight because it is a ‘non-practicing entit[y],’” a characterization and conclusion which Robocast disputed. Id. at 9. Judge Andrews found, however, that while Robocast “has no physical connection to Delaware, its corporate citizenship is of long standing. There might be cases in which a nonpracticing entity’s connections to Delaware suggest reasons to discount that connection, but this is not one of them.” Id. (citations omitted).
The factors that did favor transfer included defendant’s forum preference, the convenience of the witnesses, the location of books and records, and practical considerations that could make the trial easy, expeditious, or inexpensive. Id. at 3-4. None of these, however, overwhelming supported transfer. The convenience of witnesses was largely speculative, and the location of books and records was “of marginal weight given that it is likely that Apple’s records can be produced at trial wherever trial is held.” Id. at 6-7. In reaching this conclusion, Judge Andrews distinguished In re Link_A_Media Devices Corp., 662 F.3d 1221 (Fed. Cir. 2011), noting that he “[did] not understand the Federal Circuit to have altered the Third Circuit’s focus on the issue being not so much where the witnesses and evidence are, but whether they can be produced in court.” Id. at 7 n.10. He continued, “I have considered In re Link_A_Media Devices Corp. . . . but I do not think it is particularly helpful in assessing the transfer request in this case, as its facts were very different.” Id. at 10.
The other Jumara factors were either inapplicable or did not favor one side or the other. Id. at 4. Judge Andrews therefore concluded: “In the present case there is a greater connection to Delaware, as the plaintiff is a Delaware corporation with its principal place of business close to Delaware but not to California, and, also of considerable significance, the plaintiff would be inconvenienced by transfer. Under Third Circuit law, considerable deference is given to the plaintiffs’ choice of forum. I think that when the plaintiff is a three-person corporation with Delaware as its longstanding corporate home, and the defendant is Apple, there ought to be a compelling reason to overcome plaintiff’s choice of forum.” Id. at 10 (citations omitted).
Chief Judge Sleet recently issued a claim construction order in Pfizer Inc. v. Mylan Pharm., Inc., C.A. No. 10-528-GMS (D. Del. Feb. 21, 2012). Judge Sleet construed the following terms:
- “Catalytic activity” was given the meaning of the “inventor’s lexicography” in the patent specification.
- “Contacting” was also given the meaning given by the patentee in acting as its own lexicographer.
- “Abnormal condition” was given the meaning agreed to by the parties before the hearing.
In construing these terms, Judge Sleet rejected the defendant’s attempts to add a limitation that the method or effect must be in vitro. When the patentee wanted such an in vitro limitation in the patents-in-suit, it had expressly included one. Furthermore, the definitions in question clearly stated that an in vitro measurement method is merely one example among several possibilities.